Summary
The Madras High Court set aside the Patent Office's refusal of Syngene’s CRI patent application, citing flawed novelty and inventive step findings and misapplication of Section 3(k). The Court reiterated that CRIs can be patentable without novel hardware if they make a technical contribution.
In Syngene International Limited v. Assistant Controller & Controller of Patents, the Madras High Court set aside a refusal order issued by the Patent Office. The Court observed that the findings on novelty and inventive step were based on erroneous reasoning and that the rejection under Section 3(k) of the Patents Act, 1970, was inconsistent with the latest guidelines on Computer Related Inventions (CRI).
Background
Syngene International Limited (“Syngene”) filed Indian Patent Application No. 3091/CHE/2008 titled “A Method for Predicting Organ Toxicity and a System Thereof.” The application was examined, and the First Examination Report (FER) dated 28.09.2017 raised objections on:
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- Lack of novelty and inventive step under Sections 2(1)(j) and 2(1)(ja);
- Non-patentability under Sections 3(i) and 3(k).
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Syngene responded with amended claims and written submissions. A hearing notice was issued retaining objections under inventive step, Section 3(i), and Section 3(k). Following a hearing and filing of post-hearing submissions, the Controller rejected the claims for lack of novelty, inventive step, and under Section 3(k). Syngene appealed under Section 117A of the Patents Act.
Issues
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- Whether the Controller erred in concluding that the invention lacked novelty and inventive step.
- Whether the Controller failed to analyze the prior art accurately.
- Whether the rejection under Section 3(k), based on the absence of novel hardware, was valid in light of the latest CRI Examination Guidelines.
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Arguments by Syngene
Syngene argued that the refusal order incorrectly concluded that a CRI cannot be patented unless a computer program is used in conjunction with novel hardware, a finding contrary to the recent CRI Guidelines.
Syngene further contended that D1 did not disclose all equations listed in claims 1 and 16, and that D2 and D3 did not disclose these equations either. Syngene submitted that the Controller’s conclusion that D1 disclosed every feature of the claimed invention was incorrect. In particular, Syngene argued that the invention modelled a homeostatic in silico liver model and perturbs it to simulate toxicity, a distinct approach compared to D1, which focuses only on identifying toxic states.
Patent Office’s submission
The Patent Office maintained that D1 was correctly identified as the closest prior art. However, the Patent Office acknowledged that there was an inconsistency between the hearing notice and the impugned order. The hearing notice had specifically recorded that D1 failed to disclose the equations mentioned in the claims, whereas the impugned order concluded that D1 disclosed all the features of the claimed invention. The Patent Office agreed that reconsideration might be appropriate, particularly in light of the updated CRI Guidelines.
Court’s findings and analysis
Novelty and Inventive Step
The Court observed that the hearing notice itself recorded that D1 did not disclose all the equations in claims 1 and 16 and instead relied on D2 and D3 for those disclosures. The final order, however, contradicted this by holding that D1 disclosed all features and that the claims lacked novelty. The Court stated that such a finding could not be sustained, as a prima facie comparison demonstrated material differences between D1 and the claimed invention.
Section 3(k)
The Court opined that rejecting the claims solely because no novel hardware was claimed was inconsistent with the latest CRI guidelines. The Court reiterated that a claim cannot be rejected merely because it does not recite novel hardware, so long as there is a technical contribution beyond a computer program per se.
Conclusion
The Madras High Court set aside the refusal order and directed:
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- Fresh consideration of the application in accordance with current CRI guidelines.
- Assignment to a different officer to avoid pre-determination.
- Issuance of a reasoned, speaking order after offering Syngene an opportunity to be heard, within three months.
- No order as to costs.
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Citation: (T)CMA(PT) No. 158 of 2023
https://indiankanoon.org/doc/111125633/
Article review and accessibility review by: Ms. Anjali Santhosh
