The Delhi High Court recently overturned the Controller’s decision to reject a patent application due to a procedural lapse in the case of Arcturus Therapeutics Inc vs. Assistant Controller of Patents & Designs. The Court noted that the refusal order was based solely on procedural grounds and did not assess the merits of the patent application.
Arcturus Therapeutics Inc. (hereinafter referred to as “Appellant”) filed a patent application titled “Ionizable Cationic Lipid for RNA Delivery“ bearing number 201617019205 before the Indian Patent Office on June 2nd, 2016, as a national phase application of PCT/US2014/066242. The First Examination Report (FER) was issued raising objections regarding lack of inventive step under Section 2(1)(ja) and non-patentability under Sections 3(d) and 3(h) of the Patents Act. The Appellant responded to these objections on 13th August 2019. The Appellant then attended hearings and filed multiple procedural extensions and written submissions, the last of which was due on June 17th, 2023. However, by the time the Appellant submitted its written submissions on July 25, 2023, the Controller had already issued a decision rejecting the application on procedural grounds. The primary ground for refusal was the failure of the appellant to submit additional written submissions and the additional data within the prescribed period.
The Appellant contended that the rejection was procedural, and that the Controller failed to evaluate the application on its merits. The delay in filing the additional submissions was attributed to the time required for conducting empirical studies to provide comparative data, as requested by the Controller.
The Court observed that rejecting a patent application solely on procedural deficiencies, without evaluating its substantive merits, could have significant consequences for the Appellant. Emphasizing natural justice, the Court held that the Controller should have reviewed the FER, the Appellant’s response, prior submissions, and oral arguments before making a decision. In the interest of justice, the Court set aside the impugned order and remanded the matter back to the Controller for reconsideration on its merits, based on the existing material on record. The Court also directed the Controller to issue a fresh hearing notice and decide the matter expeditiously, preferably within three months. his case underscores that while procedural compliance is essential, it should not take precedence over a fair and thorough examination of patentability.
Citation: Arcturus Therapeutics Inc. v. Assistant Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 40/2023 (H.C. Delhi Feb. 24, 2025). Available at: https://indiankanoon.org/doc/97944272/
Authored by Anjali S, Patents Team, BananaIP Counsels.
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