Summary
In BASF SE v. Joint Controller of Patents, the Calcutta High Court reversed a patent rejection after 18 years of delay, citing violation of natural justice. The matter was remanded for reconsideration, emphasizing procedural fairness and correct application of inventive step standards under Indian patent law.
The recent judgement of the Calcutta High Court in BASF SE v. Joint Controller of Patents warrants attention for multiple reasons, particularly as it addresses the rejection of a patent application that remained pending for over 18 years. The Court ruled in favour of BASF SE (“BASF”), finding the delay obvious as to be deliberate, overturned the refusal, and directed a fresh hearing before a different officer.
Background and Facts
BASF filed a patent application for a new polymorphic form (Form IV modification) of pyraclostrobin, titled ‘CRYSTALLINE MODIFICATIONS TO PYRACLOSTROBIN’ as a PCT national phase entry on December 12, 2007, claiming priority from June 19, 2006. The first examination report (FER) was issued on February 20, 2012, and BASF submitted its response on November 27, 2012.
The application faced prolonged delays, with three pre-grant oppositions filed in April 2016, November 2018, and March 2024. Despite BASF’s timely compliance in addressing objections and participation in opposition hearings, the decision remained pending. A hearing under Section 14 was conducted in April 2023, and the patent was ultimately refused on March 4, 2024, almost 18 years after its filing.
BASF appealed that the order should be set aside on the grounds of undue delay, which constituted a violation of the principles of natural justice. They contended that the Controller incorrectly applied the test for obviousness, failed to recognize the invention’s technical advantages, and disregarded the expert affidavit submitted in support of the application.
Court’s Observations
Upon examining the timeline of events, the Court observed a consistent pattern of deliberate delay by the Hearing Officer at every stage of the examination process. It noted that a four-year lapse preceded the issuance of the First Examination Report, and the final decision was withheld for nearly a year after the hearing. The Court stated that such unjustified delays not only violate the principles of natural justice but also undermine the integrity of the patent system.
On merits, the Court found the refusal order unsustainable, as the Controller failed to apply well-established principles for assessing inventive step. Referring to Avery Dennison Corporation v. Controller of Patents and Designs (2022), the Court noted that crucial tests, including the problem/solution approach, could-would approach, and teaching suggestion motivation (TSM) test, were either ignored or erroneously applied by the Controller. The Court stated that inventive step must be assessed holistically, rather than by dissecting the invention into individual elements.
The Court further found the refusal order to be irreconcilable and inconsistent, as it relied simultaneously on lack of inventive step and insufficient disclosure, which are two mutually exclusive grounds. Drawing from Terrell on the Law of Patents, the Court observed that a claim of insufficiency often contradicts an allegation of obviousness. It affirmed that a patent specification need only provide enough detail for a skilled person to implement the invention without unnecessary difficulty, rather than being overly simplified.
The rejection under Section 3(d) of the Patents Act was also found to be untenable, as the refusal order failed to adequately consider the technical advantages asserted by BASF. The Court noted that key evidence, including comparative data demonstrating enhanced fungicidal activity of the claimed crystalline Form IV over crystalline Form I, was ignored without justification. The rejection order was deemed ex facie erroneous, as it wrongly concluded that the invention lacked technical advancement or therapeutic efficacy over known forms of pyraclostrobin.
The Court further underlined the importance of considering empirical evidence of a drug’s efficacy, acknowledging that such evidence may not be available at the time of filing but could emerge later during clinical trials, thus providing a more accurate and informed evaluation of the invention’s therapeutic benefits.
Conclusion
The Court set aside the refusal order as unsustainable and remanded the matter for fresh consideration by a different officer. Further, it directed the issuance of a hearing notice within two weeks and the resolution of the application, along with all objections, within four weeks of receiving the order. The Court clarified that it had not made a final adjudication on the merits, leaving all issues open for determination in accordance with the law.
Citation: Basf Se v. Joint Controller Of Patents And Designs, IPDPTA/5/2024 (H.C. Calcutta March 7, 2025). Available at: https://indiankanoon.org/doc/77454903/
Article Review: Dr. Vasundhara Paliwal
Accessibility Review: Rakesh Krishnan
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