Transparency Triumphs : Patent Refusals must elucidate clear grounds

The mere mention of objections without a clear elucidation of the grounds for refusal undermines transparency, says Delhi High Court

The Delhi High Court in a recent ruling dated February 28, 2024, upheld an appeal filed by Calm Water Therapeutics LLC against the refusal order issued by the Assistant Controller of Patents and Designs in Indian patent application No. 201918017795.

Brief Facts

The patent application titled “Bi-functional co-polymer use for ophthalmic and other topical and local applications” was filed as a Divisional Application to address concerns regarding unity of invention raised in the First Examination Report (FER) and Hearing Notice pertaining to the Parent Application No. 6787/DELNP/2011.  Upon examination of the Divisional Application constituting 15 claims, the Patent Office issued a FER, raising objections under Section 16(3) on the grounds that the claims conflict with the parent application, which has already been granted. In response, the Applicant decided to forego certain claims and submitted an amended set by adding another claim (claim 16) to the Divisional Application. Post the conclusion of the hearing, another round of deletion of claims 1-16 resulted in maintaining only claim 1 in the Divisional Application. The Controller rejected the Divisional Application in the order dated March 29, 2023, on grounds of lack of inventive step, insufficient disclosure, and non-patentability under Section 3(i) of the Patents Act.

Court’s Observations

The Court observed that the Controller evaluated the divisional application based on claims 1 – 16, which had already been waived off by the Applicant and disregarded ‘revised claim 1’, which survived in the Divisional Application.  The Court held that the lack of independent scrutiny of the revised claim 1 is a notable flaw in the assessment and a critical oversight of the Controller. The court also observed that, while rejecting the application, the Controller failed to provide a detailed examination of how the subject invention falls within the purview Section 3(i). The Court emphasized that mere mention of objections without a clear elucidation of the grounds for refusal undermines transparency and it is mandatory to provide comprehensive reasoning behind any patent refusal decision. The Court concluded that the failure to provide detailed reasoning for rejecting the Divisional Application warrants reconsideration, with specific attention to the revised claim and the objections raised under relevant provisions of the Act. In the light of the above, the impugned order was set aside. The Court has remanded the matter back to the Assistant Controller for reconsideration with a directive to render the decision within four months from the date of conclusion of hearing.

Citation: Calm Water Therapeutics LLC vs Assistant Controller of Patents and Designs, Delhi High Court, 28th February, 2024, C.A.(COMM.IPD-PAT) 22/2023 

Authored by Ms. Neetha Mohan, Patent Team, BananaIP Counsels.


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