The court established that an invention must demonstrate novelty and technical advancement over prior arts to be patentable, rejecting the notion of hindsight deduction in assessing inventiveness.

JUDGMENT :

(P.B. Balaji, J.)

(Prayer: This appeal came to be numbered by transfer of IPAB Case OA SR.No.74/2017/PT/CHN from the file of the Intellectual Property Appellate Board, Chennai praying to allow the present Appeal and set aside the order dated 02.05.2017 of the learned Assistant Controller and present Application being IN7854/CHENP/2011 be granted and to issue directions to the respondent to allow the Appellant to make necessary amendments in the claims, if needed, in order for the Application to be granted and costs be allowed to the Appellant.)

The Appellant challenges the impugned order dated 02.05.2017 in 7854/CHENP/2011, rejecting the Appellant’s patent application for the invention, which relates to “a process of hydrolysis of lignoceullulosic biomass”.

2. I have heard Mr.Arun C. Mohan, learned counsel for the Appellant and Mr.V.T.Balaji, learned Central Government Senior Panel Counsel, for the respondent. I have also perused the records including the impugned order. I have also carefully gone through the decisions on which the learned counsel for the Appellant has placed reliance on.

3. The main ground on which the patent has been rejected is that the claims are not inventive under Section 2[1(ja)] of the Patents Act, 1970 (in short 'Act').

4. The principal grounds of challenge to the said order, as canvassed by the learned counsel for the Appellant are that the Appellant had clearly shown that the claimed invention got over the disadvantages of the conventional method viz., difficulty to hyrdolyze cellulose to its basic sugars, which also consumed a lot of time and effort and resultantly, uneconomical. The claimed invention, apart from the above, did not require high shear and the process was achieved in a much shorter time. That apart, the invention did not require addition of any inorganic acid or any lignin solubilizing organic solvents.

5. The invention consists of a process by which, feedstock comprising of biomass having a high dry content and water is brought in contact with a solvent in the presence of a catalyst and maintaining the contact at a temperature in the range of 20 degrees centigrade to 95 degrees centigrade to create a hydrolyzed product from the biomass in the feedstock.

6. Mr.Arun C.Mohan would also contend that the present invention has been recognised abroad and as many as 23 patents have been granted to the Appellant in countries like Australia, Brazil, China, Europe, New Zealand, USA, South Africa etc. and more importantly all the cited prior arts were also cited in the prosecution of the EP application and ultimately, the claimed invention was held to be novel and inventive over the prior arts cited against it.

7. He would also take me through specific prior arts that were held against the Appellant and elaborate his submissions as to how the Controller fell in error in rejecting the patent on the ground of lacking inventive steps over the prior arts. He would also submit that the invention was clearly novel and inventive over prior arts D1, D3, D5, D9 and D10 and would make his submissions regarding these prior arts and distinguish them from the present invention.

8. He would further submit that the subject application met all the requirements of Section 10(4) & 10(5) of the Act and was clearly patentable and not hit by Section 3(d) of the Act. In support of his contentions, the learned counsel for the Appellant would also rely on the following decisions:

1) Enercon India Ltd. v. Aloys Wobben, 2013 SCC OnLine IPAB 91

2) Farbwerke Hoeschst Aktiengesellschaft Vormals Meister Lucius & Bruning, A. Corporation v. Unichem Laboratories, AIR 1969 Bom 255

3) FDC Ltd. V. Sanjeev Khandelwal and another, MANU /IC/0009/2014

4) Natco Pharma limited v. Pfizer Products Inc. in Patent Application No.537/Del/1996

5) Gandhimathi Appliances Limited v. L.G.Varadaraju and others, 2000 SCC OnLine Mad 1238

6) Tata Global Beverages Limited, West Bengal Vs. Hindustan unilever Limited, Maharashtra, India and another, report