Madras High Court
(Oa)/1/2016/Pt/Ch vs Assistant Controller Of Patents ... on 4 September, 2023
2023:MHC:4031
(T) CMA (PT) No.30 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 04.09.2023
CORAM :
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
(T) CMA (PT) No.30 of 2023
[(OA)/1/2016/PT/CH]
Helion Biotech ApS
Egholmvej 10, Vanlose – DK – 2720
Denmark. .. Appellant
vs
Assistant Controller of Patents and Designs
Government of India, Patent Office,
Intellectual Property Rights Building,
GST Road, Guindy,
Chennai – 600 032. .. Respondent
Transfer Civil Miscellaneous Appeal filed under Section 117-A
of the Patents Act, 1970 against an order of the respondent dated
21.08.2015 in No.3349/CHENP/2005.
For Appellant : Mr.P.Siddarth
for M/s.DE Penning and De Penning
For Respondent : Mr.M.Karthikeyan
SPC
JUDGMENT
The appellant had applied for grant of a patent in respect of
antibodies to Mannan-Binding Lectin-Associated Serine Protease 2
(MASP-2). In response to such application, the First Examination
Report (FER) was submitted on 01.06.2011. The appellant
responded thereto on 16.04.2012. Eventually, by order dated
https://www.mhc.tn.gov.in/judis
(T) CMA (PT) No.30 of 2023
21.08.2015, the application for grant of patent was rejected
inter-alia on the ground that the claimed patent did not qualify as
an invention both in terms of Section 2(1)(j) and Section 3(c) of the
Patents Act, 1970 (the Patents Act). The impugned order also
records the finding that some of the amended claims are outside the
scope of Section 59(1) of the Patents Act.
2. When the matter was pending before the Intellectual
Property Appellate Board, the appellant filed an application for
permission to seek consideration of claims that were further
amended after the appeal was filed.
3. Upon obtaining instructions, Mr.M.Karthikeyan, learned
SPC, submits that the Controller of Patents is willing to examine
such amended claims without making any concession on the merits
of the application.
4. In view of the above submission, without expressing
any opinion on the merits of impugned order dated 21.08.2015, the
said order is set aside and the matter is remanded for the limited
purpose of considering the amended claims placed before this Court
as Claims 1 to 27 by the appellant. The appellant is directed to file
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(T) CMA (PT) No.30 of 2023
such amended claims before the respondent within a period of two
weeks from the date of receipt of a copy of this order. In order to
preclude the possibility of any pre-determination, the amended
claims of the appellant shall be considered by any officer, other than
the officer who passed the impugned order. After providing a
reasonable opportunity to the appellant, a reasoned order shall be
passed within a maximum period of four months from the date of
receipt of amended claims from the appellant.
5. The appeal stands disposed of on the above terms
without any order as to costs.
04.09.2023
Index:Yes
Neutral Citation:Yes
ssm
To
The 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
(T) CMA (PT) No.30 of 2023
SENTHILKUMAR RAMAMOORTHY,J.
ssm
(T) CMA (PT) No.30 of 2023
[(OA)/1/2016/PT/CH]
04.09.2023
https://www.mhc.tn.gov.in/judis
