The Court sets aside the Controller General's decision and mandates fresh consideration of amended patent claims.
In a significant development, the Delhi High Court has directed the Controller General of Patents, Designs, and Trademarks to reassess the patent application filed by the President and Fellows of Harvard College concerning "non-native pancreatic ß cells." The application, initially rejected by the Controller General, will now be reconsidered with a focus on the amended claims submitted by Harvard.
The case, presided over by Justice Tejas Karia, revolves around the patent application No. 201617000758 titled "SC-ß Cells And Compositions And Methods For Generating The Same," which was submitted by Harvard on January 8, 2016. The Controller General had previously refused the patent, citing non-compliance with several sections of the Patents Act, 1970, including Sections 3(j), 3(e), 10(4), and 10(5).
Harvard's appeal contended that the Controller General failed to consider the amended claims submitted during post-hearing proceedings. These amendments shifted the focus from composition claims to specific claims for non-native pancreatic ß cells, which are said to be novel and distinct from naturally occurring cells.
The court's decision underscores the importance of evaluating post-hearing amendments in patent proceedings. Justice Karia highlighted that the amended claims, which transition from composition to specific cellular claims, must be independently assessed to determine patent eligibility. The decision aligns with previous judgments emphasizing the necessity of considering amended claims to avoid glaring procedural errors.
The Controller General has been directed to conduct a fresh evaluation of the application, taking into account the amended claims submitted by Harvard. This reassessment must occur within six months, with a detailed order to follow after providing Harvard an opportunity for further submissions.
The court's ruling is a crucial reminder of the procedural diligence required in patent evaluations, particularly in cases involving complex biotechnological inventions. The outcome of the reassessment could have significant implications for the patentability of biotechnological innovations in India.
Bottom Line:
Patents Act, 1970 - Amendment claims that significantly alter the original claims must be duly considered by the Controller before arriving at any conclusion regarding patentability.
Statutory provision(s):
Patents Act, 1970 Sections 3(j), 3(e), 10(4), 10(5), 117; Civil Procedure Code, 1908 Section 151
