The subject invention involved new features and improvements over existing devices, such as specific electric fields, specific gap between conducting plates, and use of multiple plates within a decontamination unit, which tilted the decision in favor of granting the patent.

JUDGMENT

Prathiba M. Singh, J.

Background

1. The present appeal has been filed by the Appellant-Biomoneta Research Pvt Ltd-seeking inter alia, an order to set aside the decision dated 9th February, 2021 (hereinafter `impugned order') issued by the office of the Respondent-Controller General of Patents and Designs. The impugned order refused the application for grant of a patent titled `Air Decontamination Assembly' bearing Application No. 201741016833, filed on 12th May, 2017 (hereinafter `subject patent'), under Section 15 of the Patents Act, 1970 (hereinafter `the Act') on the ground that the claimed subject matter of the subject patent does not constitute an invention under Section 2(1)(j) of the Act.

2. The Appellant company claims to be a start-up recognized by the Biotechnology Industry Research Assistance Council (BIRAC) and supported by the Department of Biotechnology, Government of India and the Karnataka State Government for various innovative products. The details of the funding and support received by the Appellant for the development of the product using the subject patent, as mentioned in the appeal are as follows:

"a) From the Government of India through the Department of Biotechnology (DBT) created Biotechnology Industry Research Assistance Counsel (BIRAC) to the tune of Rs.1,02,00,000 (Indian Rupees One Crore and Two Lakhs only);

b) From the State Government of Karnataka to the tune of Rs.30,00,000 (Indian Rupees Thirty Lakhs only);

c) Incubation, mentorship support worth USD 50,000 from the Centre for Cellular and Molecular Platforms (C-CAMP) conceptualized and funded by the DBT, Government of India."

3. The Appellant company claims to be a `One Product, One Patent' company and the subject patent is that one patent. It also claims that its product which is derived from the subject patent application has received several innovation awards and recognitions. The said awards and recognitions are listed below:

Brief Facts

4. The subject patent was initially filed as a provisional specification on 12th May, 2017 and subsequently, the complete Specification was also filed on 11th May, 2017, within the prescribed period as per the Act. The application was published in the journal on 16th November, 2018. The Appellant has also filed a PCT Application bearing international application No. PCT/IN2017/050381, with International Filing Date of 11th May, 2018 deriving priority from the subject patent application. The said PCT application was published on 15th November, 2018. Thereafter, the Appellant has also filed national phase applications in the USA and European Patent Office. The national phase application in the USA was filed on 17th May, 2019 bearing the Application No. US16462184. The national phase application in the US was published on 12th September, 2012 with publication number US 2019/0275190 A1. The national phase application in the European Patent Office (EPO) was filed on 8th November, 2019 bearing the Application No. EP18797520.6. The application before the EPO was published on 18th March, 2020 with publication number EP3621662A1.

5. In compliance with the requirement given in Section 8 of the Act, read with Rule 12 of the Indian Patent Rules, 2003 (hereinafter `the Rules') the Appellant has periodically submitted the `Statement and undertaking regarding foreign applications' in Form 3 on the following dates:

(i) 12th May, 2017;

(ii) 5th March, 2018;

(iii) 14th May, 2018;

(iv) 20th June, 2019;

(v) 3rd January, 2020;

(vi) 23rd March, 2020; and

(vii) 2nd September, 2021.

6. The Appellant filed the request for examination vide RQ No. E20194003817 dated 7th Februa