The court found deficiencies in the respondent's reasoning regarding patent application rejection, stressing the need for a proper evaluation of inventive step and adherence to principles of natural justice.

JUDGMENT :

JYOTI SINGH, J.

1. This appeal is filed on behalf of the Appellant under Section 117A of The Patents Act, 1970 (‘1970 Act’) seeking setting aside of impugned order dated 09.05.2024, whereby Respondent has refused to grant patent under Section 15 of 1970 Act in respect of Indian Patent Application bearing No. 201617030967 filed as PCT Application No. PCT/AU2015/05110 on 17.03.2015 on grounds of lack of inventive step under Section 2 (1)(ja) and non-patentability under Section 3 (d) of 1970 Act.

2. To the extent necessary, the factual matrix as brought forth in the appeal is that one PB IP Ltd. filed the PCT Application No. PCT/AU2015/05110 on 17.03.2015 having 1-31 claims originally, taking priority from 2014900932 dated 18.03.2014. Present Indian Patent Application bearing No. 201617030967 with 1-31 claims originally, was filed on 10.09.2016 before the Indian Patent Office. The application was published in the Patent Journal on 30.12.2016 and on 06.03.2018, Request for Examination was made before the Respondent in Form-18. On 28.06.2018, patent application was assigned to The Australian Plant Biosecurity Science Foundation Ltd. (‘APBSF’), along with copy of the Deed of Assignment, which was recorded in Australia. The First Examination Report (‘FER’) was issued by the Respondent on 10.05.2019, to which response was filed by the applicant on 30.10.2019, along with amended claims 1-19 and copies of drawings and abstract.

3. It is stated that on 20.11.2023, first hearing notice was issued under Section 14 of 1970 Act, scheduling the hearing for 26.12.2023, which was deferred on request of the applicant and finally, the hearing was held on 09.02.2024, whereafter written submissions were filed on 23.02.2024 along with amended claims 1-9 and amendments to Complete Specification as also Form-13. On 29.02.2024, second hearing notice was sent scheduling the hearing on 22.03.2024, which was adjourned and fresh hearing notice was sent for 09.04.2024. On 11.04.2024, APBSF appointed a Liquidator. On 23.04.2024, post-hearing written submissions were filed and subsequent thereto, vide impugned order dated 09.05.2024, Respondent rejected the application under Sections 2 (1)(ja) and 3(d) of 1970 Act. On 01.08.2024, APBSF assigned the patent application to the Appellant herein and thus the appeal is filed by the Appellant. For the sake of convenience, hereinafter the assignors and the assignees are being referred to as ‘Appellant’.

4. As stated in the appeal, present application is a National Phase Application from corresponding PCT Application bearing No. PCT/AU2015/05110 dated 17.03.2015, which claims priority from Australian Application bearing No. 2014900932 dated 18.03.2014 and is titled ‘METHOD OF CONTROLLING INSECTS AND INSECTICIDE FOR USE THEREIN’. The present invention relates to a method of controlling insects in stored food comprising the step of contacting said insects with an effective amount of synthetic amorphous silica, such as food grade synthetic amorphous silica in the form of a dust-based formulation. The invention also relates to solid insecticide formulations comprising an effective amount of synthetic amorphous silica.

5. It is stated that the technical problem that the claimed invention seeks to address is that insects can cause serious public health concerns and insect infestations can result in economic loss for example food spoilage. Admittedly, there are various insecticides available, h