Delhi High Court
Grupo Petrotemex S.A. De C.V. vs Controller Of Patents on 28 April, 2023
2023:DHC:2999
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 28th April, 2023
+ C.A.(COMM.IPD-PAT) 189/2022
GRUPO PETROTEMEX S.A. DE C.V. ..... Appellant
Through: Mr.Rohit Rangi, Mr.Vineet Rohilla,
Mr.Ankush Verma and Mr.Debashish
Banerjee, Advocates.
versus
CONTROLLER OF PATENTS ..... Respondent
Through: Ms.Arunima Dwivedi, CGSC with
Ms.Pinky Pawar and Mr.Aakash
Pathak, Advocates for UOI.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
JUDGMENT
AMIT BANSAL, J. (Oral)
C.A.(COMM.IPD-PAT) 189/2022
1. The present appeal has been filed impugning the order dated 7th June
2016, whereby the application, being Patent Application
No.965/DELNP/2006, filed on behalf of the appellant was rejected by the
Patent Office.
2. The patent application was filed before the Indian Patent Office on
24th February, 2006 as a national phase application under the Patent
Corporation Treaty (PCT), claiming priority from the corresponding US
Application bearing number US10/666415, filed on 19th September, 2003.
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
C.A.(COMM.IPD-PAT) 189/2022 Page 1 15:06:45
Signing Date:03.05.2023 of 4
2023:DHC:2999
3. The Patent Office examined the subject application and issued a First
Examination Report (FER) on 6th August, 2009, wherein the primary
objection taken by the patent office pertained to lack of novelty. In view of
the prior art document US 4436782 [hereinafter "D1"] cited in the FER, the
appellant filed detailed response on 14th April, 2010.
4. In the hearing notice dated 5th February, 2016, the following
objections were taken:
"Serial Objections
Number
1. Subject matter as described lacks novelty view of
the following prior art document US 4436783.
Therefore, the claims do not constitute an
invention under section 2[1 (j)] of Patents Act
1970.
2. Power of authority for this specific application
should be filed."
5. The hearing in the matter was held on 7th June, 2016. In the hearing,
appellant made oral submissions with regard to the objection of lack of
novelty and inventiveness as raised in the hearing notice.
6. On the very same day, the impugned order was passed rejecting the
subject application on the ground that the application lacks inventive step
with regard to prior art D1.
7. Counsel for the appellants submits that the objection raised by the
respondent in the hearing notice only pertain to lack of novelty in the subject
invention and not inventive step and therefore, the Assistant Comptroller
should not have refused the claims 1 to 16 on the ground that the subject
matter was lacking inventive step. It is further submitted that the impugned
order was passed without giving an opportunity to the appellant to file
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
C.A.(COMM.IPD-PAT) 189/2022 Page 2 15:06:45
Signing Date:03.05.2023 of 4
2023:DHC:2999
written submission in terms of the Rule 28(7) of the Patent Rules, 2003.
8. Despite opportunities having been granted, no reply filed on behalf of
the respondent.
9. I have heard the counsel for the parties.
10. A perusal of the hearing notice would show that the only objection
taken therein was with regard to novelty. However, the impugned order
proceeds beyond the objection of lack of novelty and refused grant of patent
under Section 2(1)(ja) of the Patent Act, which provides for lack of
inventive step. In fact, on the aspect of inventive step, the impugned order
specifically records that claims 1 to 16 are novel. The relevant extract of the
impugned order recording the same is extracted as under:
"It is observed that having taught by the document US 4436782 a
method of preparation of ethylene terephthalate oligomer pellets
where pelletizing head temperature is controlled by to provide an
oligomer melt viscosity of less than 3 poises , and molten droplets
fall through inert gas and are quenched/solidified into oligomer
pellets in quenching tank water; this shall be obvious to a person
skilled in the art to arrive at the claimed process for minimizing
energy consumption during the production of polyethylene
terephthalate where amorphous pellets are crystallized at elevated
temperature and subsequently introduced into a solid state
polymerization reactor, characterized in that removing heat from
hot pellets from the solid state polymerization reactor,
transferring heat removed to heat cool pellets which constitute a
feed to a crystallizer and so lacks inventive step. Although, it is
agreed that claims 1-16 are novel.
Therefore, claims 1-16 of this instant application are refused
patent u/s 15 for non compliance of the requirement u/s 2(1)(ja) of
the Patent Act 1970."
11. In view of the above, the appeal is allowed and the impugned order
dated 7th June 2016 rejecting the patent application of the appellant is set
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
C.A.(COMM.IPD-PAT) 189/2022 Page 3 15:06:45
Signing Date:03.05.2023 of 4
2023:DHC:2999
aside.
12. The matter is accordingly remanded back to the Patent Office for
fresh consideration. The fresh consideration would take into account the
material already on record and more particularly, the submissions filed on
behalf of the appellant with regard to the prior art document D1. The Patent
Office is permitted to give a fresh hearing to the appellant, in case the same
is required.
13. The Officer shall pass a reasoned order and decide the application
taking into account all the relevant considerations within four months from
today.
14. The Registry is directed to supply a copy of the present order to the
Office of the CGPDTM on the e-mail ID- [email protected] for compliance.
AMIT BANSAL, J
APRIL 28, 2023
rt
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
C.A.(COMM.IPD-PAT) 189/2022 Page 4 15:06:45
Signing Date:03.05.2023 of 4
