Court finds the rejection of VIB VZW's patent application lacked a reasoned order and failed to consider appellants' detailed submissions; directs fresh examination.
In a significant judgment, the Delhi High Court has set aside the decision of the Controller of Patents and Designs that had refused a patent application by VIB VZW and another party. The court found that the rejection lacked a reasoned order and did not adequately consider the detailed submissions made by the appellants.
The case pertains to a patent application for an invention titled 'Means and Methods for Oral Protein Delivery.' VIB VZW had filed this application under the Patents Act, 1970, but it was rejected on the grounds of lack of inventive step, non-patentability, and non-disclosure of the source and geographical origin of biological material. The appellants challenged this decision, contending that the order was unreasoned and failed to consider their detailed responses to the first examination report (FER).
The High Court, presided over by Justice Jyoti Singh, found merit in the appellants' arguments. The court noted that the impugned order was a verbatim reproduction of the hearing notice and failed to address the appellants' submissions on the lack of inventive step and differences between cited prior arts and the claimed invention.
The court highlighted that the Controller had not followed the judicially established five-step test for determining inventive step, which includes identifying a person skilled in the art and the closest prior art. The failure to do so was a significant oversight.
Moreover, the court found that the rejection based on non-disclosure of the source and geographical origin of biological material was a glaring fallacy. The appellants had disclosed the origin as "van Belgium" in their submissions, which was overlooked by the Controller.
In light of these findings, the High Court quashed the impugned order and remanded the matter back to the Controller of Patents for reconsideration. The court directed that a fresh, reasoned, and speaking order be passed after granting the appellants an opportunity for a hearing and considering their submissions. The Controller is required to complete this process within four months.
This judgment underscores the importance of reasoned orders and the need to consider detailed submissions in patent cases, reiterating the principles of natural justice and fair examination.
Bottom line:-
Patents Act, 1970 - Rejection of patent application on grounds of lack of inventive step and non-patentability - Respondent failed to consider detailed submissions and objections raised by the appellants, including differences with cited prior art and technical advancements of the claimed invention. Non-speaking and unreasoned order violates principles of natural justice and necessitates remand for reconsideration.
Statutory provision(s):
Patents Act, 1970 - Sections 2(1)(ja), 10(4)(a), 10(4)(c), 10(5), 117A
VIB VZW v. Controller of Patents and Designs, (Delhi) : Law Finder Doc id # 2907162
