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IP Case Digest · Patents Act s.3(b)

Section 3(b), Patents Act: case law

4 judgments of the Delhi High Court, the Calcutta High Court and 1 other court applying Patents Act s.3(b), from 2024–2025, each with a headnote by BRB Legal.

4judgments
3courts
2024–2025years

Sequenom Inc and Ors. v. The Controller of Patents, C.A. (Comm. IPD-PAT) 13/2022 and C.A. (Comm. IPD-PAT) 448/2022

Delhi High Court · Dismissed

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.

ITC Limited v. Controller Of Patents Designs And Trademark, IPDPTA/13/2024

Calcutta High Court · Remanded

Refusal of a heater assembly for generating aerosol under section 3(b) set aside, in the fullest treatment of that provision in this corpus. The Court held that a preconceived and subjective notion that all tobacco products cause serious prejudice to human life and health, unsupported by scientific or technical evidence, is unsustainable, and that the finding of conflict with public order and morality was unreasoned, cryptic and baseless. Observing that the interaction of patent law and ethics has always produced difficulties, it held that section 3(b) ought not to be interpreted to address all subjective concerns of morality, public order or health without scientific or technical evidence or cogent reasoning. Reliance on Article 47 of the Constitution was misplaced: neither the Directive Principles nor Article 14 have a role in adjudicating the validity of an invention, and in going down that road the Controller misjudged the role of the Patent Office. Section 83(e) was also misread as if grant would itself commercialise the product and affect public health. Separately, reliance on three documents that appeared in neither the First Examination Report nor the hearing notices was held a serious procedural infirmity violating natural justice.

Regeneron Pharmaceuticals, Inc. v. Controller of Patents and Designs, (T)CMA(PT) 191/2023

Madras High Court · Set aside

Section 59(1) compares the amended claim with the scope of the pre-amended claim, and scope cannot be found in a textually cabined reading of the claims alone: claims and complete specification form an integrated whole and must be read together. The Controller had compared the original and the amended claims without the specification. On section 3(b) he found no substantial benefit to mankind after himself recording the applicant's statement that the modification would benefit medical research.

Novozymes A/S v. The Controller of Patents, (T)CMA(PT) 156/2023

Madras High Court · Remanded

A refusal under section 3(b) for likely harm to animals was set aside where the specification showed the enzyme process was for the beamhouse or wet treatment of hides and skins in tanneries, that is on dead animals, even though it did not say so in explicit terms. The applicant was given liberty to amend to make that clear. On inventive step the Controller relied on one of four tables put forward and cherry-picked parts of another.

Other provisions of the Patents Act

All 218 judgments on the Patents Act, 1970 Search the IP Case Digest