Indian Patent Office and Delhi High Court at odds over lack of sufficient reasoning in landscape-shaping decisions

Courts are required to observe the principles of natural justice during their decision making. In 2022 the Delhi High Court reiterated these longstanding and settled principles in several landmark cases. The principle is rooted in Articles 14 and 21 of the Constitution, as well as landmark judgments including Maneka Gandhi v The Union of India (1978 AIR 597), as well as Ferid Allani v Union of India (WP(C) 6836/2006, (order dated 25 February 2008), which highlighted the importance of the doctrine of audi alteram partem.

In this final segment of the three-part review of 2022 decisions (for previous instalments, see here and here), the court stresses the importance of parties being provided with fair opportunities and that reasoned decisions should be rendered in patent matters. This policy must be observed in addition to the Indian Patent Office’s (IPO) efforts to adjudicate matters within a reasonable timeframe.

When the IPO rejected DS Biopharma’s application – titled “Compositions comprising 15-oxo-epaor15-oxodgla and methods of making and using same” – on grounds that were not explicitly raised at the hearing stage, the court noted the violation of natural justice principles and ruled in favour of the appellants (DS Biopharma Limited v The Controller of Patents and Designs and Anr (CA (COMM IPD-PAT) 6/2021).  The application, originally filed at the IPO in 2017, was objected to upon examination for lack of inventive step, non-patentability under Section 3(i) of the Patents Act and lack of clarity. Once the applicants filed their reply, the application was re-examined. A hearing was appointed and conducted with a single fresh objection regarding non-patentability of the claims under Section 3(d) of the act. Thereafter, the IPO refused the application based on lack of inventive step and clarity in addition to Section 3(d).

While the court did not dive into the analysis of the subject matter’s inventiveness, it observed that in order to raise an objection under Section 3(d):

the basic pre-condition would be the identification of the ‘a known substance’ … It cannot be left to the Applicant to deduce as to what is the known substance and thereafter give efficacy data qua that known substance, based on the said deduction. It is only new forms of substances which are derived from the same known substance that would attract the rigors of Section 3(d).

The matter was remanded back to the IPO (on 30 August 2022) for a fresh hearing in view of identified known substances, as well as for further discussion of inventive step, thus providing the applicant with a fair opportunity to deal with the objections.

In a first-of-its-kind judgment around the same time, the court decided a matter on its merits on appeal and granted a patent to the applicant. This heavily discussed order was pronounced in Avery Dennison Corporation v Controller of Patents and Designs, where the IPO refused an application for being obvious under Section 2(1)(j) of the act in view of two cited references. The IPO’s written decision failed to establish how this conclusion was reached.

The application was filed for grant of a patent titled “Notched fastener” in 2013. After examination, this was objected to for lacking inventiveness based on three prior art documents filed (in the order of their citation) 31, 18 and 28 years earlier. Once a response to these objections was presented to the IPO, a hearing was issued and the application was eventually refused in view of lack of inventiveness with regard to two of these cited references.

The court took note here that the closest cited art was an application filed by Avery Dennison Corporation, dating back to 1993. Thus, it was improbable that the improvements made 18 years later were just superficial modifications or filed with the intent of evergreening, as claimed by the IPO.

The court applied a problem/solution approach, teaching, suggestion, motivation test and the four-step test set out in Windsurfing International Inc v Tabur Marine Ltd (1985 RPC 59) (further enhanced in F Hoffmann-La Roche Ltd Ors v Cipla Ltd, 2016(65) PTC 1 (Del)) to determine the presence of inventiveness in the patent application’s subject matter. It concluded that it was non-obvious in view of improvements in shape, position, engagement with the notch and manner of detachment.

This decision was a welcome one. The court, while taking cognisance of the amount of time invested in prosecution, rendered a grant (order dated 4 November 2022) by diving into the case’s merits instead of remanding it back to the IPO.

Another important matter where the maintainability of a divisional application was questioned was Novartis AG v Controller of Patents and Designs (CA (COMM IPD-PAT) 12/2022). On 23 August 2022, the Delhi High Court upheld the maintainability of a divisional application filed by the appellant.

The application was filed in 2014 as a response to objections of lack of unity and clarity in scope raised in its 2007 parent application relating to pharmaceutical preparations for compositions and treatment methods for eye disorders.

Upon examination, the IPO objected that pharmaceutical compositions comprising the LFA-1 element of Markush compounds had already been granted in the parent application. Relying on Boehringer Ingelheim International GMBH v The Controller of Patents & Anr (CA(COMM IPD-PAT) 295/2022), the IPO contested that there cannot be a duplication of claims in the parent and divisional application.

The court considered the arguments, and observed that the divisional claim covers pharmaceutically acceptable vehicles of the parent claims’ compounds. However, the difference in substitution at the AR¹ position of the Markush shows that the claimed compound of the later claim would be different from the three compounds of the parent application. The court further observed that the divisional application could trace its origin back to the parent application and hence, the test of therapeutic efficacy over the parent did not apply here.

The court thus set aside the refusal order and held that the divisional application is maintainable and should be examined on its own merits.

The road ahead

This year has started with a bang, with references being drawn from crucial 2022 judgments. We are coming across more and more interesting discussions on the requirement of reasoned orders, claim amendments and patentability of subject matters, amongst others. We will be back soon with case revisits as they continue to shape the patent landscape in India.