26 judgments of the Madras High Court, the Delhi High Court and 1 other court applying Patents Act s.2(1)(j), from 2023–2025, each with a headnote by BRB Legal.
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 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.
Two appeals dismissed on section 3(i). The Court held that the fact a method is performed in vitro does not by itself make it patentable so long as the purpose of the process is to diagnose a medical condition: here the method of methylation of samples drawn from a pregnant woman produced a result sufficient to eliminate her from further testing, which brought it within the exclusion. Grants of the same invention in foreign jurisdictions could not displace the statutory prohibition in India. As the second application differed from the first only in the polynucleotide sequences, the analysis in the first bound the appellants in both.
Interim injunction granted restraining a biosimilar of Nivolumab during the pendency of the suit. The Court weighed that the patent was valid in fifty countries and had been sustained against challenge in thirty, that it had been granted only after fourteen years, which itself shortened the limited monopoly, that a pre-grant opposition by an association of which the defendant is a member had been rejected, and that the defendant had been under injunction for more than a year and had no manufacturing licence until December 2024.
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.
Appeal dismissed and a refusal upheld on section 59(1). The unamended claims were directed to a method of treatment, excluded under section 3(i) and failing the industrial application requirement of section 2(1)(j), and the proposed amendments went beyond disclaimer, correction or explanation. The Court distinguished Allergan, where amendment of method of treatment claims to product claims had been allowed, on the footing that the decision there did not address whether the amendment fell within the limited permitted categories and that the amended claims concerned the same disease as the original; here the original claims and specification referred to a specific disease while the amended claims referred to none, so the amendment broadened rather than narrowed the scope.
A refusal for want of inventive step was quashed as a cryptic, copy-pasted and non-speaking order passed in violation of natural justice. No reasons were given for how any of the three cited documents applied to the claimed invention. The appellant proved the pattern by filing other orders of the same Controller showing verbatim reproduction of the same reasoning, together with Delhi High Court orders quashing that officer's orders on the same ground.
Refusal for lack of novelty and inventive step set aside on both grounds. On novelty a feature-by-feature comparison showed the cited document disclosed neither the depressed cladding, nor its refractive index being lower than that of the outer cladding, nor the presence of both dopants in the core and the depressed cladding alike, nor the control of dopant concentration so as to give a continuous variation and a continuous derivative with respect to fibre radius; the cited document therefore failed to disclose all the features of the claimed invention. On inventive step the order gave no reasons at all, merely referring back to the hearing notice, with no independent analysis. Following Agriboard International, in rejecting an invention for lack of inventive step the Controller must consider three elements: the invention disclosed in the prior art, the invention disclosed in the application, and the manner in which the claimed invention would be obvious to the person skilled in the art. Without a discussion of those three a bare conclusion is impermissible, since section 2(1)(ja) itself requires the Controller to analyse what the existing knowledge is and how the skilled person would move from it to the claimed invention.
Refusal of an absorbable iron-based alloy implant application set aside for want of a recognised inventive step methodology. The Court took the five-step test laid down by the Division Bench in Hoffmann-La Roche v. Cipla, which the Manual of Patent Office Practice and Procedure, 2019 itself reiterates, and walked the impugned order through each step. The Controller referred to the person skilled in the art repeatedly but never identified who that person was; correctly identified the inventive concept and the differences from the prior art; but at the final step assumed that substituting zinc was predictable without probing whether the specific configuration claimed produced a non-obvious technical advantage or unexpected result. The order therefore lacked proper methodology and sufficient scientific reasoning and gave a scattered analysis. An order of the Controller must be scientifically reasoned, application of mind and a recorded reasoned decision being basic elements of natural justice.
After extracting two cited documents the order concluded that the skilled person could arrive at the result by combining three of them, the third never having been discussed anywhere. The prior art was never tested against the claimed invention, the written submissions distinguishing it were not considered, and the grants obtained in several other countries went unmentioned.
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.
Appeal dismissed, but on only two of the three grounds of refusal. The rejection under section 3(a) as frivolous was held untenable, that ground having been raised for the first time in the impugned order and in neither the First Examination Report nor the hearing notice. The rejection on industrial applicability was also untenable: the filter requires only that the claimed invention be capable of being put to practical use, not that it be cheaper than the prior art, so the objection that replacing the filtration material is expensive went to economic significance rather than industrial applicability. On inventive step the refusal was sustained. Section 2(1)(ja) requires both a technical advance over existing knowledge or economic significance, and non-obviousness to the person skilled in the art. Applying the Windsurfing and Pozzoli steps, with the caveat from Rhodia that the skilled person is of above average skill and normal imagination but lacks ingenuity, the Court identified a chemical engineer working in composite solid propellants, and held that selecting among known filtering materials was obvious from the prior art and common general knowledge, while limiting exposure time to reach the ideal doping percentage was routine experimentation. Without comparative cost data, economic significance was not established either.
Where the Controller holds that the subject matter is not an invention at all, he cannot derive a want-of-novelty objection from the same reasoning: to invoke that provision he must first acknowledge that there is an invention, which then fails the tests of patentability. With the 2017 Guidelines the software objection had gone as well, and the Court directed the patent to be granted.
Refusal under sections 2(1)(j) and 3(k) set aside. The Controller applied the novel hardware requirement drawn from the 2016 CRI Guidelines, which the 2017 Guidelines had already replaced, and overlooked that claim 1 itself recited at least one processor. On novelty, the order asserted that identified paragraphs of the cited document dealt with a scrambling sequence, which the Court could not find in them at all.
The Controller made lack of clarity under section 10(4) the denominator into which he fitted his objections under sections 2(1)(j) and 3(k), saying that for want of clarity he could not appreciate the claim against them, but he cannot do that. The order also showed that he had not adequately updated himself on the Computer Related Invention Guidelines, 2017.
Nine-tenths of the order was a reproduction of the hearing notice, leaving a single non-speaking paragraph to reject the applicant's explanation, and it decided the original nineteen claims rather than the eleven as amended at the hearing. The work of a Controller may be technical, but it is subject to judicial review, where the Court will look for some tangible and objective reason to justify the order.
It is much easier to say that an invention lacks inventiveness because it would bring no surprise to the person skilled in the art than to justify the statement. The hearing notice had abandoned all seven documents cited in the examination report and substituted four new ones, and the order then combined two of those without engaging the written submissions at all.
The only reasoning in the order was that the applicant's data related to a different compound from the one claimed. That was factually wrong: the same table contained an entry for the claimed compound, which the Controller had passed over while considering the other entries in it. The error vitiated the order.
A consent remand on terms. The applicant agreed to reconsideration subject to two conditions, that it be confined to the grounds on which the application was refused and the prior art cited in the impugned order, and that it be by a different officer. The Registry agreed to the first on instructions and the Court imposed the second.
An order that made no reference to any of the prior art cited in the examination report and summarily rejected the application could not stand. What makes this one worth keeping is the remand: the Controller was to proceed on the existing examination report and the hearing notice already issued, and no fresh hearing notice was to be issued.
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 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.
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.
Allowed and remanded. The refusal of an application for a field adjustable impact jar jumped to the conclusion that the invention lacked inventive step with no discussion of why the prior art applied, despite a reply distinguishing D1 and D2 on the absence of an externally accessible adjustor and adjustment window.
Allowed and remanded. The order rejecting the application for a step-action indexing mechanism concluded that the invention lacked inventive step without any discussion of why prior art D1, D2 and D3 defeated the claims, and without engaging the applicant's detailed explanation distinguishing them. A cryptic order of that kind cannot stand.
