28 judgments of the Delhi High Court, the Madras High Court and 1 other court applying Patents Act s.117A, from 2023–2026, each with a headnote by BRB Legal.
Refusal of a polymorph application set aside and remanded, with a clear finding on section 3(d). The monohydrate crystalline polymorph keeps the fungicide Benzovindiflupyr stable between 50 and 60 degrees Celsius so that it does not crystallise into lumps that clog spraying machinery, making it usable in regions where temperatures exceed 40 degrees. The Court held that this is a reasonable enhancement of efficacy satisfying section 3(d), and that the absence of enhanced therapeutic efficacy is not a bar where the product is not a medicine. The order was separately vitiated by the Patent Office omitting the data the applicant had submitted without sufficient reasoning, and relying on existing knowledge without citing any source.
Writ petition against an Opposition Board's recommendation in a post grant opposition dismissed as not maintainable. The Court held that a recommendation under section 25(3) is only that: the Controller decides the opposition on its own merits and may concur with the recommendation, reject it, or call for a freshly constituted Board. A complaint that the Board failed to consider the patentee's evidence or applied its mind can be raised at the hearing under Rule 62, and the final order is appealable under section 117A, so no prejudice arises from leaving the recommendation undisturbed.
Refusal set aside and remanded for de novo consideration of the inventive step objection. The Court held that the scope of claim 1 was determinable by reading it with the dependent claims, the description and the drawings, so the objection under section 10(5) did not hold. The unreasoned finding that claim 1 lacked technical advancement over D1 and D2 required fresh analysis applying the five step obviousness test in F. Hoffmann-La Roche v. Cipla, recently reaffirmed in Tapas Chatterjee.
Refusal under section 3(k) set aside. The claimed invention was held not to be a computer programme per se or an algorithm: it involves technical considerations, achieved by technical means and implemented on a computer using hardware such as processors and search engines, and so cannot be characterised as solely linguistic or semantic. The Controller had recorded that section 2(1)(j) was satisfied and had rejected the application on section 3(k) alone, so that conclusion removed the only ground of refusal. The matter was nevertheless remanded on a narrow point: the claims were too wide, not limited to any specific normalisation or matching process, so a patent as claimed would monopolise any method of normalising, matching and retrieving database records by similarity of search queries.
Appeal allowed and the application directed to proceed to grant, the exclusion for diagnostic processes under section 3(i) being held inapplicable. The judgment is also useful on amendments: the amended claim added a limitation that the infrared beam diameter be equal to or larger than the hydrophilic region, which had not appeared in the originally filed claims. The Court held the amendment permissible under section 59 because the feature was expressly present as a preferred embodiment at paragraph 23 of the complete specification, which explained why the relationship was needed for accurate quantitation, and because it narrows rather than expands the claim. It therefore qualified as an explanatory amendment incorporating an actual fact, adding no new matter and not changing scope.
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.
Letters Patent Appeal allowed in part in a pre-grant opposition over a process for recovering potassium sulphate from distillery spent wash. The Division Bench rejected the opponent's objection that the process was unpatentable under section 3(d), and remanded only the objection under section 25(1)(e) read with section 2(1)(ja), confined to the prior art the opponent had already cited.
Appeal dismissed and a refusal for want of inventive step upheld, which makes this a useful counterweight to the many appeals in which refusals are set aside. The Court held that the Controller had rightly analysed the application against the cited prior art and the data in the complete specification, and had rightly concluded that the claimed improvement was obvious to the person skilled in the art and showed no technical advancement. It rejected the argument that a corresponding grant in France entitled the applicant to a patent here, holding that patent rights are territorial, that every regime requires an independent assessment of novelty, inventive step and industrial application against its own standards, and that even the notional person skilled in the art differs between jurisdictions.
Appeal dismissed and a refusal under section 3(k) upheld, which makes this a useful counterpoint to the computer-related inventions that have succeeded. The claimed invention merely enabled a keyword search within a peer-to-peer network, which the Court held reflects conventional computer programme behaviour and does not enhance the functionality of the hardware, while the profiling aspect using keyword lists to locate particular types of user or data was abstract and lacked technical character. Claims 1 to 7 were therefore a computer programme per se and claims 8 to 10 algorithms. The Court applied the reasoning in Blackberry, distinguished Lava and Microsoft, and declined to examine the separate objection under section 2(1)(j) having upheld the refusal under section 3(k).
Refusal under section 3(m) set aside. The Controller had reasoned that the applicant developed only a methodology and no product, so the method was merely theoretical. The Court held that section 3(m) excludes a mere scheme, rule or method of performing a mental act, or a method of playing a game, and that on the Controller's construction every method claim would stand excluded, when the Act extends protection to process claims as well as product claims. A claim to an inventive process comprising a sequence of steps cannot be characterised as a method of performing a mental act and does not fall within the provision.
Refusal of a live recombinant Salmonella vaccine application upheld on every ground and the appeal dismissed. The claims failed sections 10(4)(c) and 10(5) because, even reading the claims with the complete specification, they gave no clear and precise definition of the full scope of the recombinant organisms covered, and the claiming of insertion and substitution mutations was not fairly based on the subject matter disclosed for want of detailed support or working embodiments. On deposit, the Court held that what proviso (ii) to section 10(4) requires to be deposited with an International Depository Authority under the Budapest Treaty is the recombinant organism, not the source bacterium, so the argument that Salmonella is commonly available did not meet the requirement. On section 3(c), the claims were broad enough to cover naturally occurring loss-of-function variants, the specification itself saying the target genes need not be mutated and that expression could be disrupted through upstream regulatory changes; the absence of a pending novelty objection was no answer.
Refusal to restore a ceased patent under section 60 set aside. The renewal fee was missed because of a death in the attorney's family, the restoration application was filed well within the prescribed period, and Form 27 had been filed for both years, all of which showed the patentee had no intention to abandon. The renewal intimation had gone to the former agent rather than the current one. At its highest this was a procedural lapse, and a granted patent should not be lost on that account alone; the Assistant Controller should have taken a liberal view.
Refusal set aside and the application for a method of controlling infestation of rice plants remanded. The 2002 amendment removed the words or plants from section 3(i), the object being to lift the bar on patenting methods for the treatment of plants. Agreeing with the Calcutta High Court in Decco Worldwide, the Court held that a method of treatment of plants does not fall within method of agriculture under section 3(h) either, since the legislature cannot have intended to remove the bar under one provision and reintroduce it under the other. None of the exclusions illustrated in the Manual of Patent Office Practice and Procedure, such as producing a plant, producing mushrooms or removing weeds, covers treatment of plants.
Refusal of an oral insulin formulation application quashed. Where the Controller had treated one document as anticipating the claimed invention in its completeness, there was no need to combine it with further documents to show lack of inventive step. No cited document taught including both of the claimed components in a single oral solid formulation, one of them taught away from a claimed component, and a skilled person reading the prior art without hindsight would have been led elsewhere. The elimination of an essential element of the prior art is itself inventive and not obvious. The Court applied the five-step obviousness inquiry from Hoffmann-La Roche v. Cipla and the principles in Bristol-Myers Squibb v. BDR, including that a party claiming obviousness through a mosaic must show how the skilled person would have been led to combine the documents. Details of corresponding foreign applications and grants had been supplied under section 8 and, though not binding, ought to have been considered. The Controller had also failed to comply with Rule 28(5), which requires him, after hearing, to specify or permit such amendment of the specification as he thinks fit to put the application in order.
Order of the Deputy Controller refusing a post-grant opposition set aside and the matter remanded for fresh consideration from the stage of argument. The Deputy Controller had recorded the submissions of the parties and the contents of their written arguments but assigned no reasons. On procedure, Order XLI Rule 25 CPC does not apply to an appeal under section 117A, because the Controller is not a civil court, following the Delhi High Court Division Bench in Promoshirt, and section 100A is confined to a second appeal against a decree or order of a civil court. There is no mandatory rule that a remand go to the same or a different officer, but where there is a possibility of pre-determination it is proper to send it to a different one.
Refusal under section 15 set aside and the application remanded. The appellant's patent attorney had not attended the hearing and sought no adjournment. The Court held that under Rule 28(5) of the Patents Rules the Controller is bound to decide the application whether or not the applicant attends, and that the decision must still be by a reasoned and speaking order. Reasoning captured in a single paragraph does not meet that standard against a detailed reply. The Controller had also failed to take into account that the patent had been granted in several other jurisdictions, which Otsuka Pharmaceutical holds is an important factor on patentability. The impugned order had been passed within ten days of the hearing, before the fifteen days allowed by Rule 28(7) for written submissions had expired.
A divisional application was refused for splitting the parent, although the Division Bench judgment permitting it had been placed before the Controller, who disregarded it. The Act requires only that the divisional flow from the specification in the parent, not from the claims. On that limited ground alone the refusal could not stand.
The claims were held obvious in the light of two cited documents and common general knowledge. The Controller gave no source for that common general knowledge and assigned no independent reasons for the conclusion. A finding reached that way is improper and cannot be sustained.
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 set aside on four grounds. An anticipating prior art must disclose the whole of the invention and contain sufficient information to allow it to be put into practice, dealing with the invention in completeness, and the order never demonstrated how the cited document did so. More fundamentally, the grounds of lack of novelty and lack of inventive step cannot work in tandem on the same document: the tests are different and cannot coexist, so a document said to contain every feature of the invention cannot simultaneously render it obvious when read with five others. Mosaicing is permissible but the reasons for it must be clearly spelt out, and there must be a common thread linking the claim to the cited documents such that the skilled person faced with the claim would turn to another citation to supplement it. On Enercon, the mere existence in the prior art of each element of the invention does not ipso facto mean obviousness, since most inventions are built with prior known puzzle-pieces; there must be a coherent thread whose tracing follows obviously, or it is hindsight deduction. Reasons are the links between the facts and the conclusion, and there were none. Finally, section 13(3) requires an amended specification to be re-examined and a report issued as under section 12, so citing additional objections in a hearing notice without issuing a Second Examination Report violated the statute.
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.
The order recorded that the agent had agreed to delete claims 15 to 28. The appellant denied any such consent and called the recital a copy paste found in numerous orders. A recorded statement of what transpired is conclusive, so the remedy is to apply to the same authority for correction, not to contradict it on appeal.
An order refusing a patent for want of inventive step was set aside as wholly unreasoned. Both D1 and D2 were cited in the First Examination Report and the hearing notice, but the order was silent on D2 altogether and never dealt with the significant differences from D1; obviousness was asserted without reasons after the section 3(k) objection had been waived, and corresponding foreign grants were ignored. Kranti Associates was applied on the duty to record reasons.
Refusal set aside and the application for methods and apparatuses for bone restoration remanded, with a delay of 93 days in filing the appeal condoned. Four of the five objections raised in the hearing notice had been waived by the impugned order, which rejected the application on the remaining one without any reasoning, and did so on the unamended claims although an amended set had been filed with the post-hearing written submissions. Applying Agriboard International, the Court held the order to be completely cryptic and lacking any justification for the finding of non-patentability.
Where re-examination under section 13(3) turned up five fresh prior art documents, the Controller was bound to issue a Second Examination Report; raising those objections for the first time in the hearing notice was contrary to sections 13(3) and 14 read with Rules 28 and 28A. The order also reproduced the appellant's own written submissions, adopted a piecemeal approach of matching parts of the invention against chosen passages of the prior art, and recorded conclusions with no element of why to support them.
Refusal of a patent for an improved biscuit baking oven set aside. The Controller had relied on a new prior art document even though amendments had been filed and the application re-examined, without issuing a Second Examination Report. The Court held that re-examination of a re-filed application is a mandatory procedure under section 13(3) and the Controller was statutorily bound to follow it, so the order could not stand on that ground alone. The order was also unsustainable for want of reasons, repeatedly recording only that the Controller was not persuaded by the appellant's arguments, with no discussion of the facts or merits. Judicial orders must meet the twin tests of why and what, and it is the why that sustains the what.
Refusal set aside on several grounds, the most significant concerning amendments the Controller had himself recommended. Where the Controller suggests or recommends amendments in respect of prior art, it is natural to assume he is well versed with those recommendations so that they do not coincide with other prior art; once the amendments are carried out there is little room for further re-examination and fresh citations. The Controller ought to advise an applicant with a view to making the application eligible for grant rather than with the aim of rejecting it, and where an application has been rectified in conformity with his recommendations it is fair to assume it would be allowed unless it fails the requirements of the Act. Suggestions for amendment must not be made in order to harass an applicant by then raising new prior art. The Court also held that citing two new prior art documents in the hearing notice violated section 13(3) and altered the entire character of the examination; that the tests for novelty and obviousness are entirely different and can never coexist in respect of the same document, novelty being defeated only by a single prior published document containing a clear description and an enabling disclosure; that written submissions filed under Rule 28(7) were disregarded; and that the order was bereft of reasons, reasons being the manifestation of the decision maker's analysis.
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.
