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Calcutta High Court

Patent Year Book 2023-2024

Patents Act
  • Amendments that clarify or limit scope of invention are not an admission of lack of novelty and inventive step.
    In Biotron Limited v. Controller General of Patents & Designs and Another, 2023 SCCOnline Cal 4568, dated 17 November 2023, the Single Judge was dealing with an appeal from order rejecting a pharmaceutical patent application on grounds of lack of inventive step, insufficient disclosure, and Sec. 3(d). While remanding the matter for fresh consideration, the Court noted that,
    • Drug development is a lengthy and complex Such compounds are marketed only after fulfilling market regulatory norms and clinical trials, which is post filing of the patent application. Thus, proposal to make additions, alterations or deletions after filing the patent application is not self-admission or acceptance of lack of novelty or inventive steps. Such amendments are permissible under the Act. Amendments by way of disclaimers are also provided to limit the scope of the invention or to remove doubts regarding meaning of the specification.
    • Controller is bound to take all amendments into consideration for appreciating enhanced efficacy u/S. 3(d) and must provide reasons for rejecting the
    • 3(d) of the Act does not bar patent protection for all incremental inventions of chemical and pharmaceutical substances. Controller must indicate the known substance or its known efficacy or the new form of the known substance in arriving at conclusions qua Sec. 3(d).
    • Impermissible for impugned orders to arrive at a finding only on selective reading of subject specification.
  • Tests of Novelty and Inventive Step, and application to be re-examined post claim amendments
    • In Guangdong Oppo Mobile Telecommunications Corp. Ltd. The Controller of Patents and Designs, AID No. 20 of 2022, dated 13 June 2023, the Calcutta High Court was sitting in appeal over a rejection order by the Controller in relation to an invention titled “Charging System and Charging Method, and Power Adaptor”. The rejection was based on ground of non-patentability u/S 2(1)(j), specifically lack of novelty, as well as on ground of lack of sufficiency. The Court noted that,
      • Test of Novelty: The prior art document must disclose the whole of the invention which enables the invention. The prior art document must deal with the subject invention in completeness and must contain sufficient information to allow the invention to be put into pracRespondent failed to demonstrate how the prior art contains all elements and deals with the invention in entirety. There are no reasons as to how the invention lacks novelty.
      • Mosaicing for inventive step: Mosaicing is permissible, but the reasons for the same must be clearly spelt out. If several prior art documents are to be read in combination, there must be some common thread linking the claim with the prior art documents obvious to a person skilled in the Otherwise, mosaicing is not permissible.
      • Novelty v. Inventive Step: The same document cannot be used for anticipation leading to loss of novelty as well as for demonstrating lack of inventive step in combination with other prior The tests of novelty and inventive step are different and cannot coexist in connection with the same document.
      • New objections and claim amendments: 13(3) of the Act makes it clear that upon amendment of claims, the amended application ought to be examined in a manner similar to the original application, i.e., it must be re-examined and a subsequent Examination Report must be issued. There has been a violation of statutory provisions in issuing the hearing notice citing additional objections and relying on the same without opportunity to the applicant to amend the claims and without issuing Second Examination Report (SER).

      The rejection order was set aside, and the matter was remanded to the Patent office for fresh consideration.

    • On similar lines, in Protean Electric Ltd. Controller of Patents and Designs, dated 06 April 2023, AID No. 15 of 2023, the Court, while allowing appeal from a patent application rejection order and remanding the matter, noted that,
      • Novelty v. Inventive Step: The tests to determine novelty and inventive step are entirely different and can never co-exist with respect to the same The novelty of an invention can be questioned only when a single document which is prior-published would contain a clear description of the claimed invention and the manner in which it has to be performed. Each and every feature of the claimed invention has to be disclosed in a single prior art and such prior art must also contain an enabling disclosure of the invention.
      • Inordinate delay is against Rules and spirit and object of the Act: Inordinate delay was noted in the process of examination where Examination request was filed on 20 September 2014 and the FER was issued on 07 January 2019. Despite affidavits, Controller took 8 years to complete the entire examination process and the same is against Rule 24B of the Patent Rules and the spirit and object of the Act.
      • New prior arts cannot be introduced in Hearing Notice: The 2 new prior arts in the hearing notice were held to be in violation of 13(3) since it alters the character of examination.
      • If suggestion for amendments by the Controller are duly carried out, it is fair to assume that such application would be Suggestions cannot be for harassment and persecution of the applicant by raising new prior arts to deny patent grant.
      • The order was also unreasoned since there were conclusions without analysing relevant facts.
  • For determining inventive step, invention must be considered as a whole.
    In Groz-Beckert KG v. Union of India and Others, 2023 SCCOnline Cal 111, dated 18 January 2023, the patent application was rejected by the Controller on ground of, inter-alia, lack of inventive step. While holding that the conclusion qua inventive step is unreasoned thus setting aside the impugned order, and remanding the matter, the Court noted that,
    • In determining inventive steps, the invention should be considered as a It is not sufficient to conclude that claimed invention is obvious merely because individual parts of the claim taken separately are known or might be found to be obvious. The whole picture presented should be taken into consideration and not a partial one. Impugned order is erroneous since it dissects subject application into two isolated elements.
    • There should be an element of preciseness about what is asserted to be common general knowledge.
  • Data demonstrating enhanced efficacy can be filed after patent application in relation to Sec. 3(d)
    In Oyster Point Pharma v. Controller of Patents and Desings and Anr., 2023 SCCOnline Cal 2141, a single judge held the rejection order of Patent Office to be unsustainable and remanded the matter for fresh consideration. While dealing with findings on lack of inventive step and bar of Sec. 3(d), the Court noted that,
    • 3(d): New form of known substance can be considered patentable only on demonstration of enhanced efficacy. For determining efficacy, results of experiments and comparative studies ought to be made before arriving at conclusions. The same were provided by way of additional documents but were not considered by the Patent Office. There is no specific time frame which prevents applicant from filing additional documents after filing the patent claim.
    • Inventive Step: None of the cited prior arts directly teach or suggest the patent claim and would have required rigorous and diligent additional experimentation. Appellant distinguished prior art D1 from the invention, but the order does not discuss the same. Hence, findings in this aspect are unsubstantiated.
  • Treatment of plants is not a method of agriculture and not within scope of Section 3(h)
    In Decco Worldwide Post Harvest Holdings B.V. & Anr. v. The Controller of Patents and Designs & Anr., 2023 SCC OnLine Cal 1140, dated 19 May 2023, the Single Judge while setting aside a rejection order in relation to fungicidal treatment for a leaf-spot disease in banana plants noted that,
    • The Manual is merely a guiding factor to statutory provisions and cannot have an overriding effect over the Act.
    • 3(h) and Sec. 3(i) cover different categories of inventions. Sec.3(h) bars method of agriculture or horticulture and does not contemplate treatment of plants to render them free of disease. Sec. 3(i) deals with process for treatment or prevention, and before the 2002 amendment also included treatment of plants (the same being excluded now). Controller failed to explain why treatment of plants qua fungal diseases would fall u/S. 3(h) which covers traditional agricultural methods, more so when there is a separate provision, i.e., Sec. 3(i) that does not itself bar such treatment.
    • Reasons are the foundation of any order passed by any judicial or quasi-judicial authority. The main objective of providing reasons in any order is to provide clarity to the reader, and to understand how and why the matter has been proceeded and dealt with by the Authority.
    • Appellants did not have adequate opportunity to address objection of lack of sufficiency of There was no whisper of the same during the hearing.
    • Findings qua lack of inventive step was also unreasoned and without appreciating the facts. There is no combination of prior arts which would help in determining whether the claimed invention lacked inventive It is important to read claims of a patent application with their specification and the Controller misdirected himself in appreciating the invention and comparing them with reference to the prior arts without understanding and appreciating the teachings thereof.

    The matter was remanded back for consideration de novo.

Protection of Plant Variety & Farmers’ Rights Act
  • Challenge to validity of registered variety can only be before Registrar/Authority
    In Pan Seeds Pvt. Ltd. v. Ramnagar Seeds Farm Pvt. Ltd. & Ors., 2023 SCCOnline Cal 1432, dated 09 June 2023, the Division Bench was dealing with infringement of a registered plant variety PAN 804 genetically related to RASI variety, and having a purple stigma. The Single Judge had dismissed the interim injunction application. While granting injunction and setting aside the impugned judgment, the bench noted that,
    • Basis definition of variety u/S. 2(za) and propagating material u/S. 2(r), plant variety includes propagating material which in turn includes the seeds. Therefore, registration of a variety would confer exclusive right on the breeder over the plant as well as the seeds.
    • Registration of a variety under PPVFR Act by itself gave the Appellant the exclusive right to produce and deal with the variety, not subject to fulfilling the validity test.
    • 89 of PPVFR Act like its corresponding Sec. 93 in Trademarks Act, 1999 imposed a bar on the civil courts to determine any matter over which the authority or the Registrar has jurisdiction. Once a plant variety is registered, it is not subject to the test of validity by the civil courts and even prima facie validity cannot be gone into. Only Registrar/Authority has the power to cancel registration on ground of invalidity. If an infringement action is brought before Court, it must take registration as valid. Only if the Defendant has taken steps for invalidity before the Registry does the Court have discretion to adjourn only the suit and not any interim application.
    • Once the appellant has been able to register its variety, it is entitled to protect it by restraining others from growing, selling, marketing or otherwise dealing with the said variety. The court could only go into the question whether the appellant and the respondents’ varieties were similar, for the purpose of consideration whether injunction should be granted.
    • Further, the respondents were given an opportunity to file documents and affidavit to oppose the injunction, however, the appellant was not given an opportunity to deal with those documents, which was in violation of principles of natural justice.
Patent Yearbook Editorial team:

Ms. Sneha Jain, Dr. Victor Vaibhav Tandon, Ms. N. Parvati, Mr. Ayush Saxena

Disclaimer: This Yearbook is for informational purposes. It does not in any manner amount to legal advice. It is not intended for advertising or soliciting.

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