14 judgments of the Delhi High Court, the Madras High Court and 1 other court applying Patents Act s.10(4), from 2023–2025, each with a headnote by BRB Legal.
Appeal dismissed, the application for a method of detecting single nucleotide variants from blood samples being held to fall within the exclusion for diagnostic methods under section 3(i). Having so held, the Court expressly declined to go into the Patent Office's views on inventive step or section 59. It added that whether such an embargo ought to exist in order to enable innovation in biotechnology is a question of policy beyond its remit.
Refusal of a regenerative braking application set aside, in part. On inventive step the Controller failed to examine the claim on what the applicant actually said distinguished it, that the user selects one of more than one regenerative mode and that the selection is the trigger for the process to operate after reckoning specific vehicle parameters, the cited document disclosing a regenerative and a reverse mode but no high and low regenerative mode. No reasons were recorded for the conclusion that the invention would be obvious to the skilled person. On sufficiency the Court found the Controller had overlooked that one predefined value was specified in a dependent claim and that a fault condition would be indicated by the system itself, but accepted that certain other predefined values did not appear in the complete specification, leaving that to be reconsidered on remand.
Refusal of a biomass hydrolysis process set aside outright. Going through each cited document, the Court found that none taught the key feature, that the hydrolysed species of the feedstock itself acts as the solvent for fresh feedstock, and that one taught away from it. On sufficiency it held, following FDC v. Sanjeev Khandelwal, that section 10(4) requires the specification to describe the invention fully and particularly and to disclose the best method, but does not require the claims to be representative of the best method; following Tata Global Beverages, that examples need not be given across the entire range claimed; and following Farbwerke Hoechst, that processes forming part of common general knowledge need not be described, the specification being addressed to those with a high degree of knowledge in the field. Disclosure of at least one way of working the invention suffices. On section 10(5) it is enough that the claims are fairly, not exactly, based on the description. On section 3(d), following Natco Pharma, where the solution itself was not known before the invention it cannot be the mere use of a known process; the could-would approach asks not whether the skilled person could have carried out the invention but whether he would have done so expecting to solve the problem or gain an advantage; and on Gandhimathi Appliances a combination of known integers showing a new use is patentable where the claimant was first to visualise it. The same prior art had been cited and overcome in the European application, and the invention stood granted in 23 jurisdictions.
Two grounds. The order moved from describing the cited documents straight to the conclusion that the invention would be obvious in the light of them and of common knowledge acquired in the course of normal research, experimentation and trial and error, without reasons and without disclosing the source of that common knowledge. And sufficiency of disclosure under section 10(4) was never properly raised in the hearing notice, so there was no opportunity to meet it.
Refusal set aside and the application for a method of detecting inclusions in diamonds directed to proceed to grant, subject to amendment of claim 1 and deletion of claim 4. On obviousness, the Controller had reasoned with hindsight: there was no discernible link between the two groups of prior art, the document relied on as a bridge taught away, and the notional team would not have combined them. On section 3(d), the second limb excludes claims to a new use of a known substance, and a method claim that immerses a diamond in molten selenium is not a monopoly claim over selenium, so the exclusion did not apply. A request to narrow substantially comprising selenium to consisting of selenium could not be refused for delay once inventive step was established. Claim 4 was rejected as insufficiently enabled.
Once the Controller gave up the three documents cited in his examination report, citing none at all in the hearing notice, there was nothing left to support a finding that the invention lacked an inventive step, and yet the finding was made. He also held that an amendment went beyond the original specification without explaining how, having allowed that amendment.
Refusal set aside where the Controller had cited the applicants' own earlier, withdrawn application as prior art D1 under section 13(1)(b). The earlier application had been withdrawn well within the period allowed by section 11A(3)(c) read with Rule 24, so it should never have been published at all, and the later filing of Forms 9 and 18A for it was both out of time and incapable of reviving a withdrawn application. The Patent Office ought to have sought clarification as to which application was to be processed. Applying actus curiae neminem gravabit, which binds every statutory authority deciding the rights of a citizen, an innocent party cannot suffer for the error of a quasi-judicial body, so the publication and citation of D1 were invalid and the novelty and inventive step objections founded on it could not stand. On section 3(k) the invention combined hardware and software with a visible technical advancement under the 2017 Guidelines for Examination of Computer Related Inventions, so the objection did not apply. Remaining objections as to clarity and breadth were formal and curable.
Refusal under sections 2(1)(ja), 3(k), 10(4) and 59 set aside on all four grounds. Section 3(k) appeared for the first time in the order itself, never in the First Examination Report or the hearing notice, so the applicant had no opportunity to meet it. The cited prior art addressed different problems, and the final amendment filed with the written submissions had already taken the claims outside section 59.
Refusal of an antiviral compound application set aside and the matter remanded. The order had rested on a selective reading of the specification and failed to deal with comparative tables showing that compounds with cyclic substitutions were active against three viral antigens where acyclic substitutions were not. On section 3(d) the Court held that the order did not identify the known substance, its known efficacy, or the new form said to be derived from it, and noted that the provision speaks of a known compound in the singular. It also recorded that section 3(d) does not bar patent protection for all incremental inventions, as Novartis itself makes clear. On section 8, the appellant having furnished details of foreign prosecution, those materials ought to have been considered though not binding.
Refusal of a patent for a fungicidal treatment for black sigatoka was set aside and the application remanded. The finding that the invention lacked inventive step was unreasoned: the Controller compared prior art D1 to D7 without appreciating what they taught, left the applicant's written submissions unanswered, and did not apply the inventive step tests set out in Avery Dennison. The court restated that a specification is construed by reading the description of the invention before the claims, following Bishwanath Prasad Radhey Shyam.
Allowed and the refusal quashed, the court observing that the manner in which the order was passed shocks the conscience of the court. It noted that the application for a bone fixation apparatus was filed in 2007 and that 13 years of the 20 year term had already lapsed, so even an immediate grant would leave a residual term of about three years. The court warned that treatment of this kind disincentivises inventors and is deleterious to the national interest, and recorded this as the fourth such order to come before the bench.
Refusal under section 15 for want of inventive step and sufficiency set aside and remanded. On section 10(4), the Court held that the mere absence of working examples does not render an application liable for rejection: section 10(4)(b) requires the applicant to disclose the best method of performing the invention known to him, which had been done, and the Controller insisted on working examples and rejected summarily without elaborating any reasons. On section 2(1)(ja), the two cited prior arts proposed significantly different teachings and addressed different problems, so a person skilled in the art could not realistically combine them, and it was inappropriate for the Controller to mosaic two substantially unrelated prior arts to invalidate the claim. The impugned order also reproduced the hearing notice objections verbatim without referring to the applicant's response, and contained no discussion of how the combination would be obvious.
Allowed and remanded for de novo consideration. A rejection recording only that "the inventive concept lies in algorithm steps, merely receiving encoded data" was held untenable. The court's objection was not to the choice of words but to the imprecise and generic methodology: where claims define a method of decoding encoded video by reference to steps and physical features such as a decoder and buffer, the Controller must identify what precisely is objectionable in that claim language. Patentability under section 3(k) is to be assessed for the presence of technical effect or technical contribution following Ferid Allani.
Allowed and the refusal set aside for want of natural justice. Three failures were identified: re-examination was ordered under section 13(3) but no Second Examination Report was issued before the refusal; prior art D3 was cited for the first time in the hearing notice; and the application was refused on sections 10(4) and 59(1), neither of which featured in the First Examination Report or the hearing notice, with no opportunity given to address them. The court also held that filing additional documents, data and evidence to meet an objection is permissible, and that non-consideration of corresponding registrations granted in other countries, while not binding, was fatal to the order.
