In a recent case, Green Cross Holdings Corporation (hereafter referred to as the “Green Cross”) filed an appeal before the Madras High Court against a refusal order issued by the patent office (“Respondent”). The Respondent refused Green Cross’ patent application bearing number 201747046586 titled “Preparation method of plasma-derived Hepatitis B Human Immunoglobulin agent” on 2nd February 2023. Citing the Controller’s findings as erroneous, the court revoked the order of refusal and remanded the matter for fresh consideration.
Facts of the case
Green Cross filed an application before the India Patent office in 2017, with a total of 19 claims. A First Examination Report (FER) was issued by the Assistant Controller on 31st December 2019, which included objections relating to the obviousness of the invention under Section 2(1)(ja), patent ineligibility under Section 3(i), and non-compliance with Sections 10(4)(a) to 10(4)(c) of the Patents Act. Green Cross addressed all the objections in its response to the FER and submitted an amended set of 14 claims on 5th June 2020.
In the hearing notice, the Controller retained all the objections and cited two new prior arts D3 and D4. Despite submitting detailed responses during the hearing and in the written submissions, the Controller rejected the application, stating that the present invention was obvious to a person skilled in the art.
Court’s analysis
The Court noted that the Controller did not discuss the prior art with specific reference to the method claimed by Green Cross. The court also noted that the Controller had summarily rejected Green Cross’s submissions without addressing prior arts D1 to D4, and simply concluded that the claims lacked inventive step.
The Court observed that the Controller erred by claiming no data was provided to show the application’s superiority over prior art, particularly in chromatography, pH, and salt concentration, despite the fact that Green Cross had submitted data in a tabular column with the written submissions. Additionally, the Court found the Controller’s observation that claim 1 lacked technical disclosure incorrect, as Green Cross had explicitly detailed the method steps in the filed claim set.
Conclusion
The Court issued an order directing that the application be examined within four months from the receipt of the order and that a hearing be provided to Green Cross within this period.
Authored by Dr. Vasundhara S. Paliwal, Patents Team, BananaIP Counsels
Citation: Green Cross Holdings Corporation v. The controller of Patents and Designs, CMA (PT) No.10 of 2023, Reserved on: 19.06.2024 Pronounced on: 28.06.2024, Madras High Court, available on https://indiankanoon.org/doc/92002567/
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