Toyota Jidosha Kabushiki Kaisha (hereafter referred to as the “Applicant” or the “Appellant”) filed an appeal before the Madras High Court against a refusal order issued by the patent office (“Respondent”) for the Applicant’s Indian Patent Application No. 6305/CHENP/2010 titled “Gene for Increasing the Production of Plant Biomass and/or Seeds and Methods for Use thereof.” The Court carefully weighed the submissions made on behalf of the Applicant and did not find any convincing justification for which the Controller had chosen to reject the Applicant’s application
Facts of the case
The Applicant had filed an application in India in 2010, with a total of 15 claims, of which 3 were independent claims. A First Examination Report (FER) was issued by the Assistant Controller of Patents and Designs on 11 November 2013, which included objections relating to the obviousness of the invention under Section 2(1)(ja) based on prior arts D1 to D6, patent ineligibility under Section 3(j), and non-compliance with Section 7(1)(a) of the Patents Act. In response, the Applicant submitted an amended set of 9 claims on 10 November 2014, along with a response to the FER.
In the hearing notice, the Controller retained the objections under Section 2(1)(ja) (based on the same set of prior arts), and Section 3(j). In addition to these, the Controller also added objection under Section 10(5) of the Act. During the hearing, the Controller reportedly suggested that the Applicant amend the independent claim by inserting the word “in vitro.” However, after filing the post-hearing submission, the Controller was not convinced by the response put forward by the Applicant and thereafter rejected the application.
The refused application included a total of one independent claim and 8 dependent claims. The independent claim of the refused application reads as follows:
Independent claim 1:
“1. An in vitro method for increasing the production of biomass and/or seeds, by which a gene encoding protein phosphatase 2C comprising any one of the following proteins (a) to (b): (a) a protein comprising an amino acid sequence selected from the group consisting of SEQ ID NOS: 5, 7, 36, 42, 48, and 59-65; and (b) a protein that is encoded by a polynucleotide hybridizing under stringent conditions to a polynucleotide comprising a nucleotide sequence complementary to a nucleotide sequence selected from the group consisting of SEQ ID NOS: 4, 6, 35, 41, and 47 and has protein phosphatase 2C activity. is overexpressed by a plant, the method comprising the steps of:- i) transforming a plant cell or tissue with a recombinant expression vector comprising a gene encoding protein phosphatase 2C comprising any one of the following proteins (a) to (b): (a) a protein comprising an amino acid sequence selected from the group consisting of SEQ ID NOS: 5, 7, 36, 42, 48, and 59-65; and (b) a protein that is encoded by a polynucleotide hybridizing under stringent conditions to a polynucleotide comprising a nucleotide sequence complementary to a nucleotide sequence selected from the group consisting of SEQ ID NOS: 4, 6, 35, 41, and 47 and has protein phosphatase 2C activity.”
Court’s Analysis
The Court carefully weighed the submissions made on behalf of the Applicant and did not find any convincing justification for which the Controller had chosen to reject the Applicant’s application.
Regarding the objections raised under Section 10(5) that the claims lacked unity of invention, the Court noted that the Controller disregarded the explanation provided by the inventor and insisted on treating each sequence individually, instead of recognizing the similarities among the sequences.
Further, the Court was also convinced that the use of the expression “in vitro” in the Applicant’s claim had not exceeded the specification within the meaning of Section 59 of the Act. The Court agreed with the submission provided by the Applicant’s Counsels regarding the word “in vitro.” The court observed that the Applicant’s invention included two aspects: (i) the preparation of the gene sequence and (ii) injecting the same into the genome of the plant cell.
The gene transfer or injection process was achieved physically and occurred after the gene sequence was prepared. Since this process was external, the term “in vitro” was used similarly to its use in IVF procedures by fertility clinics. In the context of the Applicant’s invention, the word “in vitro” was redundant to the extent that it merely indicated the method by which the gene sequence was implanted into the plant genome.
The Court also emphasized that the Controller should have focused more on the scientific aspects of the invention rather than the semantics of the language used to describe it.
Conclusion
The Court set aside the refusal order and directed the patent office to dispose the matter within a period of six months, considering that the patent was left with a shelf life of merely five years.
Citation: Toyota Jidosha Kabushiki Kaisha v. The Assistant Controller of Patents and Designs, (H.C. Madras March 22, 2024). Available at: https://indiankanoon.org/doc/160137179/, Visited on: 06/04/2024.
Authored by Dr. Vasundhara Paliwal, Patents Team, BananaIP Counsels
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