The Madras High Court, in a recent decision, affirmed the order issued by the Patent Office rejecting the patent application filed by the Indian Institute of Technology Madras (IIT-M) for an invention titled “Method of Doping Potassium into Ammonium Perchlorate.” The Court upheld the Patent Office’s refusal under Sections 3(d) and 2(1)(ja) of the Patents Act but also pointed out the shortcomings that formed part of the procedure leading up to the refusal.
Brief Facts of the Case
IIT-M filed a patent application bearing number 4032/CHE/2013 on September 10, 2013, for the invention titled “Method of Doping Potassium into Ammonium Perchlorate.” The Patent Office issued a first examination report (FER) on October 1, 2018, asserting that the claimed invention was not patentable under Section 2(1)(ja) and Section 3(d) of the Patents Act, 1970. IIT-M submitted a response to the FER, along with amendments to the claims of the invention, on April 1, 2019.
Subsequently, a hearing notice was issued by the Patent Office on November 26, 2019, maintaining the objections in the FER. Post-hearing, the Patent Office passed an order on April 20, 2020, refusing the patent application under Sections 2(1)(j), 2(1)(ja), 3(a), and Section 3(d) of the Act.
Court’s Analysis
While addressing the matter, the Court analyzed all the grounds on which the patent application was refused by the Patent Office. The Court observed that the objection under Section 3(a) of the Patents Act was neither raised in the FER nor at the hearing stage but was introduced for the first time in the refusal order. This deprived IIT-M of the opportunity to respond to the objection under Section 3(a), thus violating both Section 14 with Section 80 of the Patents Act and the principles of natural justice.
On the question of objection under Section 3(d), the Court observed that among the three exclusions outlined in Section 3(d) – namely, (a) the discovery of a new form of a known substance unless it enhances its known efficacy; (b) the discovery of a new property or use for a known substance; or (c) the use of a known process, machine, or apparatus unless it results in a new product or uses a new reactant – only exclusion (c) applied to the present matter, given that the invention pertained to a process rather than a substance. Upon further examination, the Court found that the process disclosed in IIT-M’s invention did not involve new reactants nor did it result in a new product, as compared to known methods disclosed in prior art reference D1. Consequently, the Court ruled that the claimed invention was indeed not patentable under Section 3(d) of the Patents Act.
On the ground of lack of industrial applicability, the Court observed that the claimed invention achieved potassium-doped AP with a higher burn rate, supported by industrial use cases in the specification. The Court noted that the Patent Office’s objection about the expense of filtration materials was irrelevant to the industrial applicability requirement, which centers on practical utility rather than cost efficiency.
Finally, while assessing the inventive step of the claimed invention, the Court reiterated that for an invention to be considered inventive, it must show technical advancement or economic significance, or both, and must not be obvious to a person skilled in the relevant field. The Court observed that the selection of filtering material and exposure time for ammonium perchlorate, as claimed in the invention, lacked inventive ingenuity and only constituted routine experimentation. Additionally, the Court asserted that without comparative experimental data on costs between using filtrate material and an external reagent, the economic significance of the claimed invention could not be established. Therefore, the Court was inclined to agree with the refusal of the application on grounds of lack of inventive step.
Conclusion
Upon consideration of the aforementioned points, the Court concluded that the Patent Office’s rejection of the claimed invention under Section 3(a) and on grounds of lack of industrial applicability was not justifiable. However, the rejection of the application under Sections 3(d) and 2(1)(ja) of the Act was justified and the refusal order was not questionable at least on those counts.
Authored by Dr. Rukaya Amin Chowdery, Patents Team, BananaIP Counsels
Citation: Indian Institute of Technology (IIT Madras) v. The Controller of Patents and Designs, (T) CMA (PT) No.52 of 2023;(OA/56/2020/PT/CHN), decided by Madras High Court. Pronounced on 11th June 2024, available on https://indiankanoon.org/doc/102436103/.
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