The decision highlights that patent amendment claims must fall within the initial disclosure's scope, and a lack of a reasoned decision violates the principles of natural justice in patent law.

JUDGMENT :

TEJAS KARIA, J.

INTRODUCTION

1. The present Appeal has been filed against the order dated 29.12.2023 (“Impugned Order”) passed by the Assistant Controller of Patents and Designs (“Controller”) refusing the grant of patent in respect of the Patent Application bearing No. 201917008959 (“Application”) on the grounds that the proposed amended claims are beyond the scope of the original claims filed at the time of filing.

2. The learned Controller rejected the Application under Section 59(1) of the Patents Act, 1970 (“Act”) and lack of inventive step under Section 2(1)(ja) of the Act, and due to lack of patentability. The invention of the Appellant was filed in India as a national phase entry of the Patent Cooperation Treaty Application being PCT/EP2017/072893 dated12.09.2017 (“PCT Application”).

FACTUAL BACKGROUND

3. The invention under the Application wastitled as “USE OF VANADATES AS OXIDATION CATALYSTS”and filed regarding a process of catalytically oxidising carbonaceous compounds from a combustion engine in the presence of a ternary vanadate of Formula(I). The Formula(I) is represented as wherein “MeI” and “MeII” are different from each other and stand for an element selected from the group of elements consisting of Y, La, Ce, Pr, Nd, Sm, Er, Gd, Tb, Dy, Ho, Tm, Yb, Lu, Al, Bi, Sb, wherein the values of x, y, and Z are 0.05-0.9, 0.05-0.9 and 0.05-0.9 and x + y + z = l.

4. The Appellant, thereafter, suo moto amended the claims after entering India as a National Phase Application based on the PCT Application.

5. In the First Examination Report (“FER”) dated 25.03.2021, substantive objections were raised by the Patent Office, which are as under:

(i) Novelty under Section 2 (1)(j) of the Act.

(ii) Inventive Step under Section 2(1)(ja) of the Act

(iii) Non-Patentability under section 3(d) and 3(e) of the Act.

(iv) Sufficiency of Disclosure under Section 10(1) of the Act.

(v) Clarity and Conciseness under Section 10(5) of the Act.

(vi) Definitiveness under Section 10(4)(c) of the Act.

6. Responding to the objection raised in FER, the Appellant, on 18.09.2021, filed a Response along with amended claims. Thereafter, vide a Hearing Notice dated 22.09.2022, a hearing was scheduled on 27.10.2022, which, on the request from the Appellant, was adjourned to 21.11.2022. Subsequently, another adjournment was sought by the Appellant on 16.12.2022, and the learned Controller rescheduled the hearing to 21.12.2022. The Appellant, through its agents, attended the hearing on 21.12.2022, at 12:30 pm through video conferencing. The Appellant submitted its defence during the hearing, and thereafter, the Written Submissions (“WS”) were submitted on 20.01.2023

7. On 19.12.2023, the learned Controller passed the Impugned Order, refusing the Application under Section 59(1) of the Act on the ground that the proposed amended claims were beyond the scope of the claims filed during the time of filing and there was a lack of inventive step under Section2(1)(ja) of the Act and lack of patentability, in general.

8. Being aggrieved by the Impugned Order of the learned Controller, the Appellant has filed the present Appeal.

SUBMISSIONS ON BEHALF OF THE APPELLANT

9. The Appellant, 'TREIBACHER INDUSTRIE AG', is a company incorporated under the laws of Austria, which was established in 1898 by Dr. Carl Auer von Welsbach, who was a world-renowned inventor, discoverer, and entrepreneur.

10. The lea