Summary
Delhi High Court affirmed the Indian Patent Office’s rejection of Lummus Novolen’s application for an improved Ziegler-Natta catalyst. The Court ruled that the invention lacked an inventive step and overlapped with existing disclosures.
The Delhi High Court in a recent judgment, upheld the refusal of Indian Patent Application No. 4278/DELNP/2015, which claimed an improved method for producing a Ziegler-Natta catalyst. The Court found that the claimed invention failed to satisfy the requirement of inventive step under Section 2(1)(ja) of the Patents Act, 1970, and affirmed that the refusal order was well-reasoned and aligned with established judicial precedent.
Background
Lummus Novolen Technology GmbH (“Lummus Novolen”), a German provider of process technologies, filed a patent application before the Indian Patent Office on 19th May 2015, titled “High Performance Ziegler-Natta Catalyst Systems, Process for Producing Such MgCl₂ Based Catalysts and Use Thereof”. The invention disclosed a process for preparing Ziegler-Natta catalysts using diether compounds as internal electron donors, aimed at enhancing the catalytic activity in olefin polymerization. They claimed that the catalyst system offered higher polymer yields, required lower catalyst quantities, and resulted in polymers with a superior performance profile.
The Controller rejected the application for lack of inventive step, concluding that the claimed features were obvious in view of the combined disclosures of prior art documents D1, D2, and D3. It was further noted that the subject matter substantially overlapped with Indian Patent Application No. 4277/DELNP/2015, filed by the same applicant on the same date and previously granted by the same Controller.
Aggrieved by the rejection, Lummus Novolen filed an appeal before the Delhi High Court, arguing that the refusal order lacked proper reasoning, overlooked the claimed technical advancements, and violated the principles of natural justice.
Observations by the Court
The Court observed that the Controller had rightly concluded that a person skilled in the art would have combined the teachings of D1, D2, and D3, all of which were available before the priority date, to arrive at the claimed invention. It further noted that the presence of a common inventor in both the subject application and prior art D3, who qualifies as a person skilled in the art and is presumed to be aware of existing public disclosures in the field, indicates that the applicants were attempting to monopolize the subject matter through evergreening, which is not permissible.
Lummus Novolen’s claims of improved catalyst performance resulting from the use of diether compounds were also dismissed by the Court, citing the absence of experimental data demonstrating enhanced catalytic activity. The Court observed that the absence of such evidence, coupled with the substantial similarity to previously granted application No. 4277/DELNP/2015, undermined the applicant’s assertions of technical advancement.
Conclusion
The Court found no merit in the appeal and upheld the refusal of the patent. The Court reiterated that the mere assertion of an inventive step does not, by itself, confer patentability unless the invention is also non-obvious to a person skilled in the art.
Citation: Lummus Novolen Technology Gmbh vs The Assistant Controller Of Patents And Designs, C.A.(COMM.IPD-PAT) 12/2023, (H.C. Delhi May 29, 2025). Available at: https://indiankanoon.org/doc/39113539/
Article and accessibility review by Gaurav Mishra
