Patent Controller’s Order Lacked Detailed Analysis: Madras High Court in Remitting Case for Fresh Review

High Court mandates fresh consideration of Green Cross Holdings’ patent application, emphasizing the need for thorough evaluation and reasoned decision-making.

In a significant ruling, the Madras High Court has remitted the rejection of Green Cross Holdings Corporation’s patent application for a Plasma-derived Hepatitis B Human Immunoglobulin Agent, citing the Patent Controller’s lack of detailed discussion on prior arts and inadequate reasoning. The Court ordered the application to be reconsidered by a different Patent Controller within four months, ensuring a fair hearing for the appellant.

Green Cross Holdings Corporation, represented by Mr. R.R. Nair, filed a patent application on December 26, 2017, for a method of preparation of Plasma-derived Hepatitis B Human Immunoglobulin Agent. The first examination report was issued on December 31, 2019, followed by a hearing on July 21, 2020. Despite addressing all objections in a written submission on August 3, 2020, the Patent Controller rejected the application on February 2, 2023, invoking Sections 2(1)(j)(a) and 10(4)(a) to 10(4)(c) of the Indian Patents Act, 1970.

The Court found that the Patent Controller’s order failed to discuss the cited prior arts documents (D1 to D4) in relation to the appellant’s claimed invention. “The respondent, without even discussing the prior arts documents, has summarily rejected the submissions of the applicant’s agent,” observed Justice P.B. Balaji, emphasizing the necessity for a detailed examination of prior arts.

The Court noted that the appellant had provided data and specific method steps that were not considered by the Patent Controller. The Controller’s conclusion that the application lacked inventive step and technical disclosure was deemed erroneous. “Such a conclusion is not arrived at by way of supplying any justifiable reasons,” Justice Balaji remarked, highlighting the oversight.

The judgment underscored the principles of evaluating inventive steps and technical disclosures in patent applications. It criticized the Patent Controller’s summary rejection without detailed reasoning, which is crucial for ensuring a fair and just evaluation process. “The steps have been specifically set out by the appellant in the claim dated 26.12.2017 itself,” Justice Balaji pointed out, reinforcing the need for a thorough review.

Justice Balaji noted, “For all the above reasons, I deem it a fit case to be remitted to the respondent for fresh consideration, in accordance with law and after affording a fair opportunity of hearing to the appellant.”

The Madras High Court’s decision to remit the patent application for fresh consideration highlights the judiciary’s commitment to ensuring detailed and fair evaluation processes in patent applications. By emphasizing the need for thorough discussion of prior arts and proper reasoning, the judgment sets a precedent for future patent reviews. The order mandates a fresh hearing by a different Patent Controller within four months, underscoring the importance of fairness and transparency in the patent granting process.

Date of Decision: June 28, 2024