Madras High Court: In an appeal filed against the order rejecting the grant of patent and set aside the same and consequently direct grant of the patent in respect of the appellant’s application Senthilkumar Ramamoorthy, J. while setting aside the impugned order, said that it is unsustainable and remanded the matter for reconsideration on the following terms:
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To preclude the possibility of pre-determination, an officer other than the officer who issued the impugned order shall undertake such re-consideration.
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After providing a reasonable opportunity to the appellant, a reasoned decision shall be issued within a period of three months from the date of receipt of a copy of this order.
The appellant filed a divisional application for a grant of patent for the invention titled “Aluminum Trihydrate Particles”. According to the appellant, this was a divisional application in relation to the application which was filed on 21-06-2007. By First Examination Report (‘FER’) dated 20-02-2020, objections were raised on the grounds of insufficiency of disclosure and lack of clarity and conciseness.
The appellant submitted that the Controller concluded that the application does not fulfil the requirements of Section 16 of the Patents Act, 1970, without providing any reasons in support of the conclusion. In support of the contention that the application qualifies as a divisional application, appellant relied upon the written opinion of the International Searching Authority (ISA) in respect of the corresponding PCT application. He pointed out that the ISA concluded that the application contains four separate inventive concepts, and that the application does not meet the requirements of unity of invention. Since the impugned order is completely unreasoned, the said order is liable to be set aside, and the matter remanded for re-consideration.
The Controller submitted that the appellant’s claims relate to both surface area and pore volume. Therefore, it is submitted that the complete specification does not disclose more than one invention. Section 2(1)(j) of the Patents Act and pointed out that the requirements specified therein should be satisfied to conclude that an application consists of more than one invention and that, therefore, a divisional application may be filed in respect thereof. Further, disclosures by the appellant of the complete specification are insufficient for enabling a person skilled in the art to prepare ATH particles. Therefore, the requirements of Section 10(4) of the Patents Act are not satisfied.
After examining the impugned order, the Court said that while drawing the conclusion that the application does not fulfil the requirements of Section 16, the respondent has merely referred to the objections raised in the hearing notice. In the hearing notice, the respondent records that the parent application does not contain more than one invention and that the features cited in the divisional application overlap with the features claimed in the parent application. The basis for the said conclusions are not recorded.
Moreover, the Court noted that the appellant referred to the written opinion of the ISA and to the conclusion therein that four separate concepts of invention are contained in the PCT application and that it does not meet the requirements of unity of invention. These contentions were also raised in the written submissions of the appellant, but the respondent failed to engage with these contentions and record reasons for rejecting the same. Similarly, as regards the hearing notice, the appellant has responded to the same in its written submissions, and the said response has not been dealt with while recording the conclusion that the appellant did not reply in that respect.
Thus, the Court set aside the impugned order.
Advocates who appeared in this case :
For Appellant: Advocate S. Shivathanu Mohan
For Respondent: SPC M. Karthikeyan
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