The Delhi High Court has set aside the refusal of a patent application filed by the President and Fellows of Harvard College relating to stem cell-derived pancreatic β cells, holding that the Patent Office failed to consider amended claims that materially altered the nature of the invention.
The application, titled “SC-β Cells and Compositions and Methods for Generating the Same,” concerns engineered “non-native” pancreatic β cells designed to improve insulin response, addressing limitations in existing stem cell-derived insulin-producing cells.
The Controller had rejected the application on grounds including non-patentability under Sections 3(j) and 3(e) of the Patents Act, as well as lack of definitiveness and disclosure. However, the Court found that these findings were based solely on the original claims, which were directed to a composition. Crucially, the amended claims filed during post-hearing submissions shifted the invention to a non-native pancreatic β cell per se, fundamentally changing the scope of examination.
Holding that non-consideration of amended claims constitutes a “glaring error,” the Court observed that the basis of refusal including objections on technical disclosure and patentability may not sustain once the amended claims are evaluated. The Court reiterated that patent authorities are obligated to independently assess amended claims, especially where they alter the nature of the invention.
Accordingly, the impugned order was set aside and the matter remanded to the Controller for fresh consideration of the amended claims within six months, after granting an opportunity of hearing. The Court clarified that it has not expressed any opinion on the merits of the invention.
Appearances :
For the Appellant : Dr. Satyapal Arora, Mr. Ashish Sharma, Mr. Kuldeep Kumar Singh & Mr. Nitin Sharma, Advocates.
For the Respondent : Mr. Balendu Shekhar, CGSC with Mr. Krishna Chaitanya, Mr. Rajkumar Maurya, Mr. Divyansh Singh Dev and Ms. Tanisha Samanta, Advocates.
Dr. Bhanumathi R, Assistant Controller of Patents & Designs
