Prior Art Alone Not Sufficient to Refuse a Patent!

Prior Art Alone Not Sufficient to Refuse a Patent!The High Court of Madras, while admitting an appeal relating to the refusal order dated November 21, 2016, passed by the Controller in respect of patent application No.1122/CHENP/2007, filed by the appellants, in Intercontinental Great Brands LLC and Friesland Campina Nederland B.V. vs Assistant Controller of Patents and Designs, Government of India (respondent), remanded the case back for reconsideration and order transfer the case to other Controller of Patents and Designs.

The appellants filed an appeal under Section 117-A of the Patents Act, 1970, to set aside the order dated November 21, 2016, passed by the respondent, in which the respondent refused to grant a patent to the appellant’s invention. The order of refusal to grant the patent was broadly based on the requirement of the hearing notice not being met by the appellants’ submissions.

Facts of the Case

The application was related to a soluble foaming composition, particularly a foaming protein-free composition to be added into beverages such as coffee, soup and specific categories of food products, which can produce froth or foam. The Controller issued the first examination report (FER) after the appellants applied for a request of examination, cited four documents D1-D4 raising objections concerning the obviousness to the person skilled in the art under section 2(1)(ja), section 3(e), nature of independent claims, and section 10(4) of the Patent Act, 1970.

The respondent objected that the invention is a mere discovery of a scientific principle of the formulation attracting section 3(e), and it is not explained adequately how the invention is not apparent to the person skilled in the art inviting section 2(1)(ja). The respondent objected that out of five independent claims, 1, 18, 21, 26, and 37 in the patent application, claims 21 and 26 are extended characterisations of claims 1 and 18 and chose not to treat them as independent claims. Moreover, the respondent asserted that the invention is not disclosed sufficiently and adequately in the application as required under section 10(4).

The appellants responded to the first examination report (FER) and made several amendments to the claims, retaining the total number of claims that were filed originally. The respondent was dissatisfied with the response to FER and issued a notice of hearing, citing documents D1-D4 again. After the hearing, the appellants filed the written submission, amending the claims a second time but keeping the number of claims the same as filed originally. Unsatisfied with the hearing and written submission, the Controller refused the grant of patent to the applicant’s invention.

The appellants moved to the court to set aside the impugned order passed by the Controller and submitted to the court that this invention was already patented in several countries. It was filed in India in 2006 with 46 claims, 5 of which were independent claims and the rest dependent claims. The application was filed with the first claim incorporating inventive features such as “a foaming powdered protein-free soluble composition” and “less than 1% protein.”

The learned counsel for the appellants argued that the cited prior art documents D1 and D2 in FER contain a high percentage of protein. In contrast, the appellant’s foaming composition is essentially protein-free, involving less than 1% protein. The learned counsel further asserted that the prior art D3 discloses a gasified coffee glass, etc., prepared by forming a mixture of 3% to 12% water and 88% to 97% of coffee-derived solids, etc., and D4  relates to an aromatic agent to be added to a foaming agent. Both documents D3 and D4 have little relevance to the invention. Over the objection regarding the independent nature of claim .21 and claim 26, the learned counsel argued that claim 21, in essence, deals with a food product composition and claim 26 deals with a powder form of foaming composition, whereas 1 and 18 deal with foaming composition. While the composition remains the same, the product form through which the composition is expressed is still different. The learned counsel alleged that the Controller did not appreciate the explanation provided by the applicants and remained stuck to the cited documents. Additionally, the Controller did not explain why the patent application was refused.

After carefully weighing the submissions, the court found that “the Patent Controller has not held himself with an opportunity to consider the submissions or the explanations provided by the appellant to the prior arts even though they are filed before him. In other words, the Patent Controller appears unifocal and seems to have focused only on the prior arts and not the explanations offered against them. This necessarily requires to be rectified, which implies that this matter has to necessarily go back to the Patent Controller.”

The court further ordered that, as this patent application has only two years of shelf life left, the patent offices shall dispose of it within four months. In this case, the Controller held a unifocal view, considering only the prior arts. He did not appreciate the submissions and explanations offered by the applicants against the prior art. The court also transferred the matter back to the respondent.

The court’s decision reiterates that the Controller is required to appreciate all the submissions and explanations submitted by the applicant against the cited prior art when any patent application is refused. A unifocal view of the Controller on prior art is insufficient to support the reasons for refusal.

Authors: Manisha Singh and Dr. Priya Kush

First Published By: Lexology here