The Hon’ble Delhi High Court has set aside a refusal order of the Controller of Patents and Designs (“Controller”) for flouting the principles of natural justice.
The Controller examined an application for grant of a patent on method of producing protein-enriched blood serum using gold particles filed by Arthrogen GmbH (“Appellant”), and had, initially, raised an objection to its patentability under Sections 3(c), 3(d), 3(e), 3(f), and 3(j) of the Patents Act, 1970 (“Act”) in the First Examination Report.
The Appellant made amendments to the claims to address the initial objections and a hearing was scheduled in this matter. However, in the hearing notice that was communicated to the Appellant, the Controller had raised new objections under Sections 3(b) and 3(i) of the Act which were not part of the initial examination report. The Controller, eventually, refused the application under Section 3(j) and 3(i) of the Act.
The Court, in the appeal filed by the Appellant, opined that the Controller violated principles of natural justice by refusing the application under Section 3(j) of the Act which was not covered in the hearing notice. Hence, the refusal under this section was beyond the scope of the notice.
As regards refusal under 3(i), the court ruled that the subject claims are related to a method of making a composition and are not related to a method of treatment and, therefore, do not fall under Section 3(i) of the Act. Although the blood serum produced by this method can be used for homologous or autologous blood transfusion, the transfusion is a subsequent step that is not covered in the claims. Therefore, the Court stated that the refusal based on Section 3(i) is also not valid.
Accordingly, the Court set aside the refusal order and remanded the matter back to the Patent Office.
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Arthrogen GmbH v. Controller General of Patents, Designs, Trademarks and Anr. C.A.(COMM.IPD-PAT) 415/2022, [Delhi High Court, judgement dated, 5th February 2024]