Summary
In a recent ruling, the Madras High Court set aside the rejection of a patent application concerning a single-stage carbon capture process. It noted inadequate reasoning in the rejection and improper reliance on new grounds during the appeal. The Court remanded the matter for reconsideration, stressing the need to assess technical and economic merits.
The Madras High Court, in Dr. Joy Vadakkan Thomas v. Assistant Controller of Patents and Designs, set aside the rejection of Indian Patent Application No. 201941042481, which claimed a single-stage process for capturing carbon dioxide. The application, titled “A Method for Capturing Carbon Dioxide,” was refused on the grounds of lack of inventive step and non-patentability under Section 3(d) of the Patents Act, 1970. The Court remanded the matter for fresh reconsideration, observing that the rejection order lacked adequate reasoning and failed to properly evaluate the claimed technical advancement and economic benefits of the invention.
Background
The application disclosed a single-stage process for capturing and sequestering carbon dioxide using an insoluble system comprising an alkali or alkaline earth metal carbonate in an aqueous organic solvent. The inventors asserted that the insoluble nature of the system enables the easy separation of carbon dioxide through simple filtration, yielding purified air.
The First Examination Report (FER) cited prior documents D1 and D2 and objected to the claims on grounds of lack of inventive step and non-patentability under Section 3(d). These objections were reiterated in the hearing notice, which also introduced an additional prior art, D3. During the subsequent prosecution, including the hearing and post-hearing submissions, the applicant argued that D1 and D2 involved multi-stage processes relying on soluble systems, unlike the claimed invention. They further pointed out that D3 employed amine-based compounds, whereas the claimed invention used a metal carbonate system.
Despite these arguments, the application was rejected on the basis that the invention would be obvious in light of the cited documents and did not demonstrate any unexpected or advantageous effect over existing solutions. The applicant challenged the rejection order, arguing that the cited prior art lacked any teaching, suggestion, or motivation that would lead a person skilled in the art to the claimed process.
In its counter-affidavit, the Indian Patent Office introduced a new ground by comparing the claimed invention with a previously granted patent (No. 201941040876), which had not been cited in the FER or addressed in the impugned order. The applicant objected to this fresh ground, asserting that it was introduced for the first time at the appellate stage, thereby depriving them of a fair opportunity to respond during the original examination.
Court’s Analysis
The Court undertook a detailed comparison of the invention and the cited prior art. It observed that both D1 and D2 disclosed complex, two-stage processes using soluble systems in the first stage, which were significantly different from the applicant’s single-stage, insoluble system. The Court found that the cited documents lacked sufficient “cues or pointers” that would lead a person skilled in the art to arrive at the claimed invention. It underlined that the mere existence of similar components or processes is insufficient unless they provide a clear direction toward the claimed solution. The Court also found that there was insufficient analysis on whether the claimed invention offered a technical advance or economic advantage over the prior art.
The Court also held that the IPO’s reference to a previously granted patent constituted a new ground, which could not be entertained at the appellate stage. However, given the IPO’s claim that the invention was substantially similar to the earlier granted patent, the Court observed that it would be in the public interest for this issue to be examined during the remand proceedings.
Conclusion
In setting aside the rejection, the Court directed the Controller to re-examine whether the claimed invention demonstrates a technical advance or economic advantage, particularly in comparison to the earlier granted patent. It further instructed that the matter be reconsidered by a different officer, and that the applicant be granted a fair hearing before a reasoned order is passed within four months.
Citation: Dr. Joy Vadakkan Thomas vs Taiho vs The Assistant Controller Of Patents and Designs, (H.C. Delhi, March 4, 2025), CMA(PT)/20/2024. Available at https://indiankanoon.org/doc/144149632/
