Madras High Court
Helix Biomedix Inc vs Assistant Controller Of Patents And ... on 7 December, 2023
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
(T)CMA(PT).No.138 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 07.12.2023
CORAM
THE HON'BLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)CMA(PT) No.138 of 2023
(OA/9/2017/PT/CHN)
Helix Biomedix Inc.
22121 - 17th Ave SE #112
Bothell, WA 98021
USA; Nationality: USA ... Appellant
Versus
Assistant Controller of Patents and Designs
Government of India, Patent Office,
Intellectual Property Rights Building
GST Road, Guindy,
Chennai – 600 032. ... Respondent
PRAYER: Transfer Civil Miscellaneous Appeal (Patents) filed under
Section 117-A of the Patents Act, 1970, prays that the order dated 7
November 2016 and issued by the Respondent on 7 November 2016
be set aside and the application No.4583/CHENP/2009 for patent be
allowed to proceed to grant.
For Appellant : Mr. S.Shivathanu Mohan for
M/s.De Penning and De Penning
For Respondent : Mr. Rajesh Vivekananthan, DSG
Mr.Manoj Madhavan
Deputy Controller of Patents
(Present in VC)
https://www.mhc.tn.gov.in/judis
1/8
(T)CMA(PT).No.138 of 2023
JUDGMENT
The appellant assails an order dated 07.11.2016 by which Patent
Application No.4583/CHENP/2009 for grant of patent to an
invention entitled "Short Bio-Active Peptides for Cellular and
Immunological Modulation" was rejected.
2. The appellant submitted the above mentioned application on
04.08.2009. Upon a request for examination, the First Examination
Report (FER) was issued on 07.10.2013. In the FER, the respondent
raised objections inter alia on the grounds of lack of inventive step
and under Section 3 of the Patents Act, 1970 (the Patents Act). The
appellant responded to the FER on 11.04.2014. Thereafter, amended
claims were submitted. Pursuant to a hearing on 04.04.2016, the
appellant made oral submissions and also submitted written
submissions on 18.04.2016. Eventually, by order dated 07.11.2016, the
application for grant of patent was rejected. The present appeal arises
under the above facts and circumstances.
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3. Learned counsel for the appellant submitted that the claimed
invention relates to chemically synthesized peptides, which do not
exist in nature and were not isolated from a natural source. Merely
because the parent protein, cecropin-B, originates in a type of moth,
he submitted that the application was rejected by citing Section 3 (c)
of the Patents Act. In this connection, he referred to internal page 16
of the appeal and pointed out that the respondent had overlooked
the enumerated significant differences between the claimed
invention and peptides occurring in nature.
4. In response to these submissions, it was submitted on behalf
of the respondent that independent claim 1 of the appellant relates to
sequence ID No.1, comprising SEQ ID Nos.2,3,5,6,7,8,9,10,11,12 or 15.
It was further submitted that all the claimed sequences are obtained
from hyalophora cecropia, which is known as the cecropia moth.
5. From the response to the FER and the written submissions of
the appellant, it appears that the appellant asserted that the peptides
https://www.mhc.tn.gov.in/judis
in respect of which an invention is claimed are chemically
synthesized using particular methods. Reference may be made in this
regard to paragraph 4.5 at internal page 16 of the appeal.
6. The impugned order is brief and the operative portion
thereof is as under:
“The claims related to this application primarily relate to
short bio-active peptides that are useful for promoting
wound healing in mammals. To this end, instant
application has claimed isolated peptides derived from
Cecropin B.
Claims relating to these isolated peptides referred to
Sequence ID no.1 comprising Sequences
2,3,5,7,8,9,10,11,12 or 15. Upon scrutiny of the pages
describing sequence listing, it was established that all the
claimed sequences are obtained from Hyalophora cecropia
also known as the Cecropia moth.
In view of this finding, the isolated sequences claimed in
amended claims 1-11 are not patentable under Section 3(c)
as they relate to a substance occurring in nature.”
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7. The above extract discloses that the respondent recorded the
conclusion that all the claimed sequences are obtained from
hyalophora cecropia. It also appears that such conclusion was recorded
by examining the sequence listing. However, the submissions of the
appellant that the peptides are synthesized chemicals and that they
do not occur in nature were not dealt with. It is of paramount
importance that an order of adjudication in respect of an application
for grant of patent should contain cogent reasons for the
conclusions recorded therein and that such conclusions should be
reached after engaging with the contentions of the party applying for
patent. Since the impugned order does not meet the above
requirements, the order is set aside and the matter is remanded for
re-consideration.
8. Accordingly, (T)CMA(PT)No.138 of 2023 is disposed of by
directing the respondent to re-consider Patent Application
No.4583/CHENP/2009 on the following terms:
(i) In order to preclude the possibility of pre-
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determination, such reconsideration shall be made by
an officer other than the officer who passed the
impugned order.
(ii) After providing a reasonable opportunity to
the appellant, a reasoned decision shall be issued
within a period of four months from the date of
receipt of a copy of this order.
(iii) It is made clear that no opinion is expressed
herein on the merits of the application for grant of
patent.
There shall be no order as to costs.
07.12.2023
Internet : Yes/No
Speaking/Non-Speaking Order
Neutral Citation: Yes/No
kal
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To:
Assistant Controller of Patents and Designs
Government of India, Patent Office,
Intellectual Property Rights Building
GST Road, Guindy,
Chennai – 600 032.
https://www.mhc.tn.gov.in/judis
SENTHILKUMAR RAMAMOORTHY J.
kal
(OA/9/2017/PT/CHN)
07.12.2023
https://www.mhc.tn.gov.in/judis
