The judgment emphasizes the requirement for a reasoned decision and scrupulous adherence to principles of natural justice while rejecting patent applications, highlighting the elements of inventive step and the need for a discussion on the existing knowledge and obviousness of the subject invention.

JUDGMENT

Amit Bansal, J. (Oral)--The present appeal has been filed under Section 117-A of The Patents Act, 1970 (hereinafter "the Act") impugning the order dated 21st April, 2022 passed by the Assistant Controller of Patents in Indian Patent Application No.201817014040 (hereinafter "subject application") filed on 12th April, 2018 for the invention titled "Expression of Recombinant Proteins in Trichoplusia Ni Pupae" (hereinafter "subject invention").

BRIEF FACTS

2. Brief facts relevant to decide the present appeal are as follows:

2.1. The appellant had filed the subject application on 12th April, 2018 at the Patent Office, New Delhi.

2.2. Subsequently, a complete specification with claims was filed with the Patent Office. Along with the complete specification, the appellant also filed a duly filled Form 18 as the request for Examination of the subject application on 7th August, 2018.

2.3. The Patent Office issued a First Examination Report (FER) on 3rd November, 2020, in terms of which, objection was raised that the claims lack inventive step in view of the prior-art documents referred to as D1, D2, D3, D4, D5 and D6 and therefore, do not constitute an invention under Section 2(1)(j) of the Act. The FER also raised an objection under Section 3(b) and 3(j) of the Act stating that the subject matter claimed in claims 9-17 were non-patentable under Section 3(b) of the Act and claims 1-7 attracted Section 3(j) of the Act. Further, the respondent held that there was lack of unity of invention under Section 10(5) of the Act. Only claim 8 was allowed under Section 2(1)(j) of the Act.

2.4. The appellant filed a formal request under Rule 24B (5) of the Patent Rules to extend the time for filing a response to FER. The due date for filing the FER was extended to 3rd August, 2021

2.5. A detailed response was filed on behalf of the appellant to the aforesaid FER on 17th June, 2021 and amended its claims. Subsequently, various hearing notices were issued by the Patent Office to the appellant, wherein once again an objection was taken with regard to lack of inventive steps in view of the prior art documents, D1, D2, D3, D4, D5, D6 and a new prior art document, D7. In the hearing notice dated 9th November, 2021, the Assistant Controller of Patents maintained the objection relating to clarity and conciseness, lack of `inventive step' and non-patentability in terms of Section 3(b), 3(i) and 3(k) of the Act.

2.6. The appellant filed written submissions on 14th January, 2022 dealing with the prior art cited by the Patent Office and patentability of the subject invention.

3. The impugned order was passed by the Patent Office on 21st April, 2022 rejecting the subject application holding that the amended claims are not patentable under Section 3(b) the Act. The relevant observations of the impugned order are set out below:

"Applicant agent's arguments have been considered but not found persuasive in view of above claims. Section 3(b) states an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment is not patentable.

Amended claims (1-07) on record attract section 3(b) of Indian Patent Act 1970. The method of producing recombinant proteins by destruction of pupa still attracts section 3(b) of Indian Patent Act 1970. The amended claims (1 07) are not eligible for patent protection as per Section 3(b) of the Patents Act, 1970."

SUBMISSIONS OF THE APPELLANT

4. Counsel appearing on behalf of the appellant submits that detailed submissions were made on behalf of the appellant in response to the FER as well as in the written submissions, wherein the subject invention has been distinguished from the prior art cited by the Patent Office and patentability of the subject invention has been detailed. However, the Patent Office has passed a cryptic order without dealing with any of the submissions made on