Back
2024 Supreme(Mad) 753
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Senthilkumar Ramamoorthy, J.
Global Life Sciences Solutions USA LLC, U.S.A. – Petitioner
Versus
Controller General of Patents, Designs & Trademarks, Mumbai and Another – Respondents
(T) CMA (PT) No. 40 of 2023 (OA/17/2020/PT/CHN)
Decided On : 06-03-2024
For the Appellant :Manisha Singh, Abhay Pandey, Varun Sharma, M. Suthakar, Gautam Kumar, M/s. LEX ORBIS, Advocates.
For the Respondent: S. Diwakar, SPC, Praveen Kumar, (Asst. Controller of Patents).
IMPORTANT POINT
The main legal point established in the judgment is that an invention must satisfy the novelty requirement and demonstrate an inventive step, which involves a non-obvious combination of known elements, to be granted a patent.
Headnote:
Patents - Patent Application Rejection - Patents Act, 1970, Section 3(k) and Section 2(1)(ja)
Fact of the Case:
The appellant's patent application for a RFID system was rejected, leading to the appeal. The appellant claimed priority from a US patent application and faced objections under Section 3(k) and Section 2(1)(ja) of the Patents Act, 1970.
Finding of the Court:
The court found that the appellant's invention satisfied the novelty requirement and the claimed invention was not obvious from the cited prior arts. The court set aside the impugned order and directed the application to proceed to grant on the basis of the amended claims.
Issues: The issues revolved around the novelty and inventive step of the appellant's invention in light of the cited prior arts and the requirements of the Patents Act, 1970.
Ratio Decidendi: The court held that the appellant's invention satisfied the novelty requirement and the claimed invention was not obvious from the cited prior arts, thereby establishing the inventive step. The court also emphasized the different nature of redundancy deployed in the claimed invention compared to the prior art.
Final Decision: The appeal was allowed, the impugned order was set aside, and the application was directed to proceed to grant on the basis of the amended claims.
JUDGMENT :
(Prayer: Transfer Civil Miscellaneous Appeal (Patents) filed under Section 117A of the Patents Act, 1970, praying to (a) admit the present Appeal and after considering the aforesaid substantial grounds to allow the Appeal; (b) issue an order setting aside / quashing the Impugned Order dated March 04, 2020, passed by the Respondent No.2 in Patent Application No.6061/CHENP/2010 dated September 27, 2010; (c) an order or direction directing the Respondents to grant a Patent for the Appellants' Patent Application No.6061/CHENP/2010 in accordance with the provisions of the Patents Act, 1970 and the Rules made thereunder; (d) amend, add or alter any ground of Appeal and also be permitted to place on record any relevant material in the form of an affidavit, written submission, synopsis of case law, etc; (e) pass any other appropriate relief, order and/or direction, which this Court may deem fit and proper in the circumstances of the case and to meet the ends of and in the interest of justice; and (f) that the costs and incidentals be allowed to the Appellants.)
Background
1. This appeal is directed against an order dated 04 March 2020 rejecting Patent Application No.6061/CHENP/2010.
2. The predecessor-in-interest of the appellant, GE Healthcare Biosciences Corp, had applied for grant of patent for an invention titled “A Gamma Sterilizable RFID system that Prevents Unauthorized Operation of Associated Disposable Bio-process Components” by claiming priority from 27 March 2008 as per application dated 20 August 2008 for grant of patent before the United States Patent Office (the USPTO). After filing PCT Application No. PCT/US08/073624, the predecessor-in-interest of the appellant filed the national phase application in India on 27 September 2010. Upon request by the appellant, the First Examination Report (FER) was issued on 27 March 2018. In the FER, objections were raised on various grounds, including under Section 3(k) of the Patents Act, 1970 (the Patents Act) and Section 2(1)(ja) thereof. The appellant responded to the FER on 09 September 2018. Thereafter, pursuant to a hearing held on 16 December 2019, the appellant filed written submissions along with amended claims. Eventually, by order dated 04 March 2020, the patent application was rejected. This appeal was filed in the said facts and circumstances.
Counsel and their contentions
3. Oral arguments on behalf of the appellant were advanced by Ms.Manisha Singh and Mr.Varun Sharma, learned counsel. Mr.Diwakar, learned SPC, assisted by Mr.Praveen Kumar, Assistant Controller of Patents, responded on behalf of the respondents.
4. Learned counsel for the appellant opened submissions by providing an overview of the nature of the claimed invention. At the outset, it was submitted that radio frequency identification (RFID) devices are widely used for identification of objects, such as animals and garments, and for the detection of unauthorized opening of containers or packets with such objects. In the context of disposable bio-process components, learned counsel pointed out that there is exposure to gamma radiation and that this affects the memory devices used in such RFID devices. Therefore, a need arose to solve the above problem by producing a device and devising a process that eliminates or mitigates the risk of gamma radiation induced loss of device performance. She next submitted that the claimed invention is a RFID device which has a memory chip with two components: a complementary metal oxide semiconductor (CMOS) and, most importantly, a ferro-electric random access memory (FRAM) chip to store redundant information written to a plurality of regions. This device is attached to disposable bio-process components and has the ability to withstand exposure to gamma-sterilization of intensity ranging from 25k Gray to 50k Gray.
5. By referring to the cited prior arts, learned counsel submitted that prior art D1, US Patent No.20080042837 A1, discloses the use of RFID tags in the pharmac
