Madras High Court: In a civil miscellaneous appeal filed under Section 117-A of the Patents Act, 1970, set aside the impugned order of the Assistant Controller of Patents & Designs and hold that the claimed invention in the present case is patentable under Section 2(1) (ja) of the Act; and to direct the Controller to grant the patent, Senthilkumar Ramamoorthy, J. while setting aside the impugned order, directed that the Application be proceeded to grant patent based on claims 1-2.
The appellants filed the application for a grant of patent in respect of an invention entitled “FILM FOR PLANT CULTIVATION” by specifying 28-09-2010 as the priority date. The claimed invention relates to a process involving the use of polyvinyl alcohol film (PVA film) of specifications in plant cultivation.
The Controller rejected the national phase application derived from PCT Application.
The Court said that the respondent has failed to identify the source or basis for reaching the conclusion regarding non-disclosure, and it is untenable considering the complete specification and the disclosures made under the heading ‘mode for carrying out the invention’, the methods disclosed for measuring birefringence, swelling degree and penetration resistance and the root penetration test.
The Court further said that the appellants have given complete specification which also capture the results of the evaluation of the claimed invention against the parameters of penetration, nutrient permeability and root penetration test. As regards conclusion that heat treatment and drying are disclosed in prior art document D1, it does not teach, motivate, or suggest the claimed invention. In fact, it teaches away to the extent that it proposes the use of a laminate for the purposes specified in D1.
Therefore, the Court while setting aside the impugned order, noted that original claims 1-2 set out the requisite properties of the PVA film, i.e. with regard to birefringence and swelling degree. These claims were originally drafted as substance/product claims and were probably given up because of the objection under Section 3(d) of the Patents Act.
Further, it added that the only surviving objection to current claims 1- 2 was regarding lack of inventive step, which is untenable. Thus, the Court directed that the Application be proceeded to grant based on claims 1-2.
[Kuraray Co. Ltd v Mebiol Inc., 2023 SCC OnLine Mad 7568, Decided on 29-11-2023]
Advocates who appeared in this case :
For Appellants: Advocate Vindhya S. Mani , Advocate Kiran Manokaran (Lakshmikumaran & Sridharan)
For Respondent: DSG Rajesh Vivekanandan
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