Whether the subject matter claimed under the patent application lacks novelty and inventive step
- The University of Copenhagen filed application no. 531/DELNP/2013 as National phase application based on the PCT International application No. PCT/EP2011/004565 dated 06.07.2011. The First Examination Report (FER) was issued on 02.07.2018.
- The FER raised objections on the ground of lack of inventive step in certain claims, they being obvious in the context of prior art. The FER also observed that claims 19-20 revolved around a plant and was thereby non-patentable under Section 3(j) of the Act. Objections were also raised due to lack of unity of invention.
- The hearing was conducted on 04/03/2020 and the Appellant filed written arguments along with amended claims at the Patent Office on 17/04/2020. Consequently, the patent was refused vide order dt. 06.05.2020.
- The University preferred this appeal.
While the Controller had claimed that the application lacked unity of invention and identified three different inventions, he examined claims related to only 1 invention before making his order of refusal. Such selective examination of claims is impermissible.
The Respondent seems to have copied verbatim the search report by the International Searching authority, without applying his mind, and this is an unfortunate situation of abrogating from duty.
The Court further noted that proper examination would reveal that the subject matter is regarding a mutant version of seed not found naturally but artificially created and hence not prohibited from patent protection under Section 3(c).
The Court observed that claims 1-16 related to “A method for decreasing the glucosinolate (GSL) content in seed or seed meal…” while claim 17 related to “A mutant GTR allele encoding a GTR protein comprising an amino acid sequence”. Claim 17 is independent of other claims and if the auxiliary request to delete this claim were to be accepted, the scope of claims 1-16 would remain unchanged and the objection taken by learned Controller on the specific claim 17 will also be obviated. Thus, the Court ordered that the auxiliary request be accepted and patent be issued within 2 weeks from the date of this order.
Citation: 2020 SCC OnLine IPAB 112