The Delhi High Court, on September 11, allowed an appeal challenging the rejection of a patent application by the respondent Assistant Controller of Patents and Designs. Justice Manmeet Singh Arora observed that the respondent had failed to conduct a proper comparative analysis between the cited prior arts and the claimed invention, and had not applied the established tests for determining inventive step as mandated by judicial precedents.
The case arose when the appellant challenged the refusal of its patent application by the Indian Patent Office for an invention titled “Ophthalmic Delivery Device and Ophthalmic Drug Compositions’. The invention was a medical device designed for delivering drugs into the eye, specifically into internal spaces such as the suprachoroidal or supraciliary space, areas crucial for treating several retinal and ocular diseases.The respondent rejected the application on the ground that the invention lacked an inventive step under Section 2(1)(ja) of the Patents Act, 1970 and stated that the subject matter was obvious in view of prior arts like D1–D6, and therefore not sufficiently innovative to gain patent protection. The appellant contended that the device was distinctly innovative, featuring a self-actuated deployment mechanism that allowed the flexible cannula to be automatically and safely inserted into the targeted eye space.He also pointed out that this feature was absent from all prior art references, and the Controller had not applied the five-step test for inventive step laid down in F. Hoffmann-La Roche Ltd. v. Cipla Ltd. ((2016) 65 PTC 1 (DB)) and Agriboard International LLC v. Deputy Controller of Patents & Designs 2022 SCC OnLine Del 4786. It was further alleged by the petitioner that the order merely reproduced portions from the European patent and prior documents without much reasoning, even though the same invention had already been granted a patent by the European Patent Office.
The Court, after examining the record, found that the respondent had failed to consider the detailed arguments dated 05.12.2023 submitted by the appellant in response to the hearing notice issued by him. It also noted that a proper comparative evaluation of the prior arts and the claimed invention was missing,the reasoning appeared to be mechanically copied without independent assessment and it had also failed to consider the applied steps approved in F. Hoffmann- La Roche Ltd & Anr. vs. Cipla Ltd and Agriboard International LLC v. Deputy Controller of Patents & Designs 2022 SCC OnLine Del 4786. Accordingly, the Court allowed the appeal and remanded the matter to the Controller for fresh consideration and directed that a personal hearing be given to the appellant and, that a reasoned order be passed upon reassessment of the application in light of the established tests for inventive step. The Court further instructed the Patent Office to decide the matter expeditiously, preferably within three months from the date of the order. It was clarified by the Court that no opinion was being expressed on the merits of the subject patent application which would be adjudicated strictly in accordance with law. The Court further directed the Registry to forward a copy of the judgment to the Office of the Controller General of Patents, Designs and Trade Marks for compliance and accordingly disposed of the appeal in the aforesaid terms.
Appearances:
For the Appellant – Ms. Vindhya S. Mani and Ms. Naina Gupta, Advocates
For the Respondent- Mr. Nishant Gautam, CGSC with Mr. Vardhman Kaushik, Mr. Shaurya Mani Pandey Mr. Prithvi Raj Dey and Ms. Srijita Koley, Advocates
