Madras High Court
Shimadzu Corporation vs The Assistant Controller Of Patents And ... on 13 February, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
CMA(PT)/59/2024
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 13.02.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
CMA(PT)/59/2024
and C.M.P.No.27473 of 2024
1.Shimadzu Corporation
1, Nishinokyo-kuwabaracho,
Nakagyo-ku, Kyoto-shi,
Kyoto 6048511,
Japan.
2.National Center for Geriatrics and Gerontology
7-430, Morioka-cho, Obu-shi,
Aichi 4748511,
Japan. ... Appellants
-vs-
The Assistant Controller of Patents and Designs,
The Patent Office,
Intellectual Property Building,
G.S.T.Road, Guindy, Chennai – 600 032. ... Respondent
PRAYER: Civil Miscellaneous Appeal (Patents) is filed under Section
117A of the Patents Act, 1970, pleased to allow the present appeal and pass
1/6
https://www.mhc.tn.gov.in/judis
CMA(PT)/59/2024
an order setting aside the Impugned Order dated 23.04.2024 passed by the
Respondent in respect of the Indian Patent Application No.201647043103,
and hold that the subject matter of Claims 1 to 4 of the Indian Patent
Application No.201647043103 falls outside the scope of Section 3(i) of the
Patents Act, 1970, and is thus liable to proceed to grant, and direct the
Controller to grant the patent and publish the grant in the journal.
For Appellants : Ms.Vindhya S.Mani
for M/s.Lakshmi Kumaran
and Sridharan Attorneys
For Respondent : Mr.S.Janarthanam, SPC
**********
JUDGMENT
An order dated 23.04.2024 rejecting Indian Patent Application
No.201647043103 is challenged in this appeal. The said patent application
was for a claimed invention titled SURROGATE BIOMARKER FOR
EVALUATING INTRACEREBRAL AMYLOID β PEPTIDE
ACCUMULATION AND METHOD FOR ANALYSIS THEREOF.
https://www.mhc.tn.gov.in/judis
CMA(PT)/59/2024
Pursuant to a hearing by video conference on 29.03.2023, the impugned
order was issued. By such order, the respondent concluded that the claimed
invention is excluded from patentability under Section 3(i) of the Patents
Act, 1970 (the Patents Act).
2. Learned counsel for the appellants submits that the impugned order
relies on the earlier order of this Court in the Chinese University of Hong
Kong v. The Assistant Controller of Patents and Designs 2023:MHC:4616
[The Chinese University of Hong Kong], which was pronounced on
12.10.2023. Since the virtual hearing was held on 29.03.2023, learned
counsel submits that the appellant was unable to deal with the judgment and
endeavour to convince the respondent that the claimed invention does not
per se disclose pathology. She relies upon an earlier judgment of this Court
in Somalogic Operating Company INC. v. The Assistant Controller of
Patents and Designs, CMA(PT)/25/2024 [Somalgic Operating Company],
judgment dated 03.09.2024, to contend that it applies squarely.
https://www.mhc.tn.gov.in/judis
CMA(PT)/59/2024
3. In response to these submissions, Mr.S.Janarthanam, learned SPC,
submits that the claimed invention relates to a method of diagnosing
diseases, such as Alzheimer's disease. Consequently, it is contended that it
clearly discloses pathology and qualifies as a diagnostic method under
Section 3(i) of the Patents Act.
4. The chronology of events in this case is substantially similar to that
prevalent in Somalogic Operating Company. As contended by learned
counsel for the appellants, the hearing by video conference took place on
29.03.2023, which was prior to the judgment in the Chinese University of
Hong Kong on 12.10.2023. Consequently, the appellants did not have the
opportunity to endeavour to establish that the claimed invention does not
qualify as a diagnostic method under Section 3(i), as interpreted in the said
judgment. In the interest of justice, it is necessary that such opportunity be
provided to the appellants. Consequently, interference with the impugned
order is warranted.
https://www.mhc.tn.gov.in/judis
CMA(PT)/59/2024
5. Therefore, impugned order dated 23.04.2024 is set aside and the
matter is remanded for re-consideration on the following terms:
(i) In order to preclude the possibility of pre determination, such re-
consideration shall be undertaken by an officer other than the officer who
issued the impugned order.
(ii) After providing a reasonable opportunity to the appellants,
including a personal hearing, a fresh order 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.
6. Therefore, CMA(PT)/59/2024 is disposed of on the above terms
without any order as to costs. Consequently, C.M.P.No.27473 of 2024 is
closed.
13.02.2025
rna
Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes / No
https://www.mhc.tn.gov.in/judis
CMA(PT)/59/2024
SENTHILKUMAR RAMAMOORTHY,J
rna
CMA(PT)/59/2024
13.02.2025
https://www.mhc.tn.gov.in/judis
