Review and Reversal of Patent Refusal Orders by the Madras High Court

In this post, we bring to you three Madras High Court cases that have set aside or reversed the refusal of patents by the Controller of Patents. These refusals were invalidated based on lack of reasoning, invalidity of grounds, and disagreement with patentability assessment.

Case Notes

  1. Polymorphic forms of RTA-408 are patentable as RTA-408 does not qualify as a known substance or prior art, says the Madras High Court.

In an appeal from the refusal of a patent application relating to polymorphic forms of RTA-408, the Madras High Court stated that the refusal was not valid, and allowed claims 1 to 6 of the application to proceed to grant. The Controller of Patents had earlier refused the patent application based on Section 3(d) and lack of inventive step.

For purposes of Section 3(d), the Court stated that  RTA-408 would not qualify as a known substance because the patent application relating to the compound was published after the priority date of the patent application in question. Based on the same reason, the Court also stated that the said patent would not qualify as a prior art reference for inventive step assessment.

About the other prior art references cited by the Controller, the Court stated that  presence of flourine atoms, and di-methyl substitution differentiated the claimed invention from the prior art. It also stated that it would not be obvious for a skilled person to choose one among 100 compounds cited in the prior art, and modify the same to arrive at the claimed invention. The Court however did not permit the composition claim as synergy was not shown.

Source: Mr.Tony Mon George vs Deputy Controller of Patents & Designs, Madras High Court, 20th December, 2023, (T) CMA (PT) No.150 of 2023 (OA/61/2020/PT/CHN)


2. Refusal of patent application relating to ‘circulating fluidized bed boiler’ set aside  by the Madras High Court as  inventive features were not considered by the Controller

The Madras High Court has set aside an order of the Controller of Patents refusing a patent application relating to ‘circulating fluidized bed boiler’. The order was set aside because the order merely cited the features of the prior art reference, but did not state how the innovative features in the claimed invention would not be patentable based on the reference. The applicant argued in the case that  the introduction of overflow conduit feature in the boiler was not considered by the Controller, and also that the claimed invention had only one heat exchange as opposed to two heat exchanges in the prior art reference. Convinced, the Court set aside the order and ordered the application to be assigned to another officer, who shall decide within 4 months.

Citation: Sumitomo Shi FW Energia OY. vs Deputy Controller of Patents and Designs, Madras High Court, 23rd January, 2024, (T)CMA(PT)/50/2023

3. Patent refusal based on insufficiency of disclosure set aside by the Madras High Court as the ground was not cited in the examination report or hearing notice.

The Controller of Patents refused a patent application claiming a method for controlling the temperature of fuel injected into a combustion engine that allows for a reduction in the amount of fuel injected into engines. The refusal was based on insufficiency of disclosure, which was not cited in the examination report or the hearing notice. The Madras High Court reviewed the documents on record and set aside the refusal order, as it was against the principles of natural justice. The Court ordered that the application be considered de novo by another Controller.

Citation: Robert Bosch Limitada vs Deputy Controller of Patents and Designs, Madras High Court, 10th January, 2024, C.M.A. (PT) No.31 of 2023


The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.

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