The Single Bench of the Delhi High Court in the case of N.V. Satheesh Madhav & Anr vs Deputy Controller of Patents & Designs consisting of Justice Amit Bansal reiterated that principles of audi alteram partem must be followed by the Patent Office while rejecting a patent application.
Facts:
This appeal u/s 117A (2) of The Patents Act, 1970 (“the Act”) impugned the order passed by the Deputy Controller of Patents and Designs, whereby the appellant’s application for grant of the patent bearing no.2924/DEL/2008 was refused due to lack of inventive step u/s 2(1) (ja) of the Act and it being not-patentable subject matter u/s 3(d) and 3(j) of the Act.
Contentions Made:
Appellant: It was contended that while rejecting the patent, the impugned order did not refer to the prior-arts documents. There was no analysis as to the similarity between the cited prior art and the subject invention of the appellant. None of the prior arts talked about ‘non-absorbent cotton’, which was the subject matter of this application. Further, the objection u/s 3(j) was not applicable since the subject matter of the invention was neither plants nor animals nor parts of them thereof nor seeds. Moreover, the objection u/s 3(j) was not applicable since it was not a discovery of a new form of a known substance but an entirely new product.
Respondent: They reiterated the objections u/s 3(h) of the Act. It was further contended that the patent claimed is not an invention and there is no inventive step involved. Moreover, the Patent Office does not give a monopoly over growing seeds on such bio-beds of already-known non-absorbent cotton.
Observations of the Court:
The Bench noted that the Controller proceeded on the basis that application was in respect of technique describing growing of Vigna radiata (Linn.) Wilczek plants (“said plants”) on the bio-bed were prepared using non-absorbent cotton, whereas the amended claims were in respect of an invention regarding the method of preparing the bio-bed for growing the said plants.
It opined that e Controller committed an error in invoking Section 3(j) of the Act on the ground that the application was in respect of the biological process for the production or propagation of plants and animals since the patent was sought in respect of an invention, i.e., ‘bio-bed’ and the method of making the bio-bed and not in respect of the method for growing the said plants.
It further opined that the impugned order was passed cryptically without going into the explanation offered on behalf of the appellant regarding the prior art. Relying on Agriboard International LLC v. Deputy Controller of Patents and Designs it reiterated that the principles of audi alteram partem must be followed by the Patent Office while rejecting a patent application.
It observed that the Controller failed to analyse how the subject matter of this application was lacking inventive steps and obvious in the light of the prior art. It further observed that since sufficient data had been given showing comparative data in respect of the said plants growing on the bio-bed as invented by the appellant and on normal soil, the controller ought to have considered the data as provided and assess if the same was sufficient to overcome the objection of Section 3(d).
The decision of the Court:
Given the aforesaid, the impugned order was set aside and the matter was remanded back to the IPO for a fresh consideration, which would consider the objection of lack of inventive step in the light of the prior art referred. Since the objection u/s 3(j) of the Act was not a part of the hearing notice, in the event, the Controller wished to object to the same, a fresh hearing notice was to be issued to the appellant so that the appellant gets a chance to meet the objection. If required, the appellant might be granted a fresh hearing by the ld. Deputy Controller for consideration of the data provided regarding the objection u/s 3(d). Nothing stated in the impugned order or in this order would bind the Controller on the merits of the objections, which were to be dealt with u/s 3(d), 3(j) or u/s 2(1) (ja) of the Act.
Case: N.V. Satheesh Madhav & Anr vs Deputy Controller of Patents & Designs
Coram: Justice Amit Bansal
Case No: C.A. (Comm IPD PAT) 111/2022, decided on 23rd December 2022
Advocates for Appellants: Ms. Meenakshi Ogra, Mr. Tarun Khurana and Mr. Vikramaditya Singh.
Advocates for Respondent: Mr. Manish Mohan, CGSC and Mr. Jatin Teotia.
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