Arthrogen GMBH filed a patent application claiming a method of producing protein enriched blood serum using gold particles. Initially, the Controller of Patents raised objections in the first examination report based on Sections 3(c), 3(d), 3(e), 3(f), and 3(j). In response, the applicant amended the claims to overcome the objections. The Controller of Patents then issued a hearing notice with objections based on totally new provisions – Sections 3(b) and 3(i), which did not form part of the examination report. The applicant appeared at the hearing and made written submissions. Thereafter, the Controller of Patents refused the patent application based on an objection in the examination report: Section 3(j), and another objection in the hearing notice: Section 3(i).
Aggrieved by the refusal, the patent applicant filed an appeal before the Delhi High Court challenging the refusal order. The appeal was primarily based on violation of principles of natural justice relating to Section 3(j), and non-applicability of Section 3(i) with respect to the claimed invention. Claim 1 of the patent application reads as follows:
“1. A method of producing a protein enriched blood serum comprising the steps of: collecting a blood serum;
mixing the blood serum and gold particles in a container; incubating the blood serum and gold particles to produce protein-enriched body fluid serum; and removing the gold particles from the protein enriched blood serum.”
As it can be seen, the independent claim relates to a method of producing protein enriched blood serum through a series of steps.
The Court reviewed the claims and the refusal order, and stated that the Controller of Patents violated principles of natural justice by citing Section 3(j) as a ground of refusal because the said provision was not part of the objections in the hearing notice. By not stating the ground, the Court stated that the Controller did not give the applicant an opportunity of responding to the objection, which amounts to violation of principles of natural justice.
Dealing with Section 3(i), the Court stated that the claims relate to a method of preparing protein enriched serum using gold particles. As per the Court, the claims relate to a method of making a composition, and do not relate to a method of treatment. Though the blood serum produced from the method can be used for homologous or autologous blood transfusion, the Court pointed out that transfusion is a subsequent step, which is not covered in the claims. Therefore, the Court stated that the refusal based on Section 3(i) is not valid.
Based on its conclusions, the Court set aside the refusal order, and asked the patent office to consider the application de novo. It asked the Controller to provide a hearing to the applicant, and decide on the patent application within 4 months from the date of the hearing.
Citation: Anthrogen GMBH Vs. Controller General of Patents, Designs,Trademarks and Anr. C.A.(COMM.IPD-PAT) 415/2022
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