6 judgments of the Delhi High Court, the Madras High Court and 1 other court applying Patents Act s.15, from 2023–2025, each with a headnote by BRB Legal.
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.
Appeal dismissed and refusal of a divisional application for an intermediate compound upheld. The Court held it obvious for a person skilled in the art to replace ethoxy with methoxy to provide alternative intermediates useful in synthesising aminothiazole derivatives, both being lower alkyl, and noted that the prior art documents and the subject application lay in the same field and shared a common inventor, which it treated as of much relevance. On the law, it held that an inventive step under section 2(1)(ja) must be more than a variety or an add-on variation and must lie beyond what is known to a person in the relevant field, so a trivial run-of-the-mill improvement or modification reflecting no creativity is not an inventive step.
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.
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.
A national phase application was refused as filed beyond the thirty-one month deadline. The official filing receipt and the Office's own note-sheet endorsement both showed it was filed three days inside that deadline, and on instructions the Office accepted that the date recorded in the order was a computer generated error.
