11 judgments of the Calcutta High Court, the Madras High Court and 1 other court applying Patents Act s.3(e), from 2023–2025, each with a headnote by BRB Legal.
Writ allowed and a refusal based on pre-grant opposition set aside, on a point of procedure that recurs in opposition practice. Where the objections raised in the First Examination Report differ from those in the representation under section 25(1), the Controller is obliged to hold two separate hearings, one on the pre-grant opposition and one on the application under examination, and to pass separate orders dealing with each. The Court also held that the Controller erred in failing to consider the applicant's expert affidavit and technical evidence, and that conducting an independent scientific analysis without giving the applicant an opportunity to address it was a serious infirmity and a breach of natural justice.
Both grounds fell on the same defect, that the order did not acknowledge what had actually been filed. The written submissions set out comparative data against four cited documents to show technical advancement, yet the order recorded that the applicant had failed to establish any, which was contrary to the record. On section 3(e) the Controller never engaged the foundation of the claim, a tablet that dissolves because it carries no enteric coating, giving higher concentration without losing late release.
Grant directed. A reduced-sodium table salt formulation was not a mere admixture of two inorganic salts within section 3(e): the inventive contribution lay in forming aggregates from the primary particles by heating, compaction or exposure to diluted steam, and the synergistic effect was demonstrated in the worked examples, which the Controller overlooked. Both cited documents taught away, one seeking to minimise aggregates and the other relying on citric acid. The section 3(e) objection was also absent from the First Examination Report and surfaced only in the hearing notice.
Refusal of a product claim to an orally, rapidly disintegrating tablet for want of inventive step set aside, with the objection under section 3(e) remitted. The applicant had already been granted a patent on a co-pending application for the process of preparing the tablet. The Court held that having granted the process patent the Controller was estopped from reopening that process, finding it no different from the prior art, and so refusing the product: product patents and process patents are different, and obtaining one does not bar an application for the other, though a process patentee cannot claim monopoly over the product or stop another arriving at it by a different process. The finding that coated tablets of the compound were well known to the skilled person was made without citing any document, and the reasons the applicant had given on the cited prior art were never discussed. On section 3(e) the Controller held the objection unmet without discussing the explanations at all.
Remand on both grounds of refusal. The order never referred to the feature the invention turned on, a double population of large and small pores, which appeared in none of the four cited documents, and on section 3(e) it never examined which substances were said to form the admixture. The synergistic effect objection, raised in the First Examination Report and then virtually given up at the hearing stage, was revived in the order itself, taking the applicant by surprise.
Refusal set aside where the Controller disallowed, under section 59(1), an amendment narrowing claims from a composition comprising a compound to the compound itself. The Court held that section 59(1) disallows an amendment only where the specification as amended would claim or describe matter not in substance disclosed before the amendment, or where a claim as amended would not fall wholly within the scope of a pre-amended claim. The amendment must be a subset of the original claim, and a compound is a subset of a composition containing it. Claims and the complete specification form an integrated whole and must be read together. Amendments before grant are to be read expansively, the Ayyangar Committee Report favouring a wider scope of amendment before acceptance than after, so an amendment that merely pares down, narrows or chisels down the original claims, disclosing nothing new, is permissible.
Refusal under sections 3(e) and 3(i) set aside. The section 3(e) objection never appeared in the hearing notice, and the Court reiterated its consistent position that the Controller must enumerate all pending objections there, a requirement also carried by Circular No. 4 of 2011. Omitting it deprived the applicant of the chance to answer and violated natural justice. On section 3(i), claim 1 was a product claim naming no disease, no treatment and no mode of administration, so a provision directed at methods of treatment did not apply. The scope of a patent is set by the claims, read in light of the description; working examples demonstrate that an invention is feasible and workable but do not define its scope, so the mere recitation of unit numbers in the claim could not render it ineligible.
Appeal partly allowed. On obviousness the Court held that the order gave no reason why a person skilled in the art would pick one compound out of more than a hundred in the cited prior art and add a methyl substituent to arrive at the claimed compound, particularly when several other compounds in that document had lower IC50 values, and that without hindsight it did not appear possible. The order had also brushed aside the other claimed technical advancements without reasons. On section 3(d) the Court held that since the parent compound was not a known substance, its polymorphic forms could not be treated as obvious and section 3(d) did not apply, so enhanced efficacy need not be shown; the x-ray diffraction pattern identifies a polymorph rather than being a technical advancement. The composition claim failed section 3(e) because no synergy between the ingredients had been asserted or demonstrated.
Allowed in part. The refusal was set aside as regards claims 1 to 7, which were directed to proceed to grant, while the rejection of composition claims 8 to 11 was upheld. On section 3(e) the court held that the provision, unlike sections 3(d), 3(f) and 3(p), does not contain the word "known", and declined to read that adjective into it, departing from the IPAB's view in Stempeutics Research. The consequence is that where an ingredient independently satisfies the requirements of an invention, a patent may be granted for it notwithstanding section 3(e). A composition claim remains excluded where the substance merely exhibits the aggregate properties of its constituents, and the court held that section 3(e) is not confined to independent claims.
A consent remand on terms. With the Registry offering reconsideration on instructions, the applicant agreed subject to two conditions: that the reconsideration be confined to the grounds on which the application was refused and to the prior art cited in the order, and that it be done by a different officer. The Registry accepted the first and the Court imposed the second to preclude confirmation bias.
The companion appeal, on another application of the same applicant, decided the same day on identical terms. A consent remand, confined to the grounds on which the application was refused and to the prior art cited in the impugned order, and to be undertaken by a different officer so as to preclude confirmation bias.
