IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 08.11.2023 CORAM THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY (T)CMA(PT)/141/2023 (OA/43/2020/PT/CHN)

1. The Board of Trustees of the Leland Stanford Junior University Office of the General Counsel Building 170, 3^rd floor Main Quad, PO Box 20386 Stanford, California 94305-2038 United States of America Previously at

1705 E1 Camino Real Palo Alto California 94306-1106 United States of America Through its Authorised Representative Mr.Prosenjit Chattopadhyay

2. Department of Veterans Affairs Office of the General Counsel Washington District of Columbia-20420 United States of America Through its Authorised Representative Mr.Prosenjit Chattopadhyay ... Appellants -vs-

Assistant Controller of Patents and Designs Patent Office Intellectual Property Building GST Road, Guindy Chennai - 600 032. ... Respondent PRAYER: Transfer Civil Miscellaneous Appeal (Patents) filed under Section 117-A of the Patents Act, 1970, praying to the Hon'ble Court to allow the present appeal; pass an order setting aside the impugned order of the respondent dated 24^th April 2020; pass an order granting a patent on Indian Patent Application No.9445/CHENP/2013 and issue consequential directions to effectuate such grant.

For Appellants : Ms.Vindhya S. Mani for M/s.Lakshmikumaran and Sridharan For Respondent : Mr.S.Diwakar, CGSPC

JUDGMENT

The appellants challenge an order dated 24.04.2020 by which PCT national phase Indian Patent Application No.9445/CHENP/2013 in relation to an invention titled as “A Polynucleotide Library for sequencing, analysing and utilising single samples” was rejected.

2. The above mentioned application was filed by the appellants on 25.11.2013. Upon examination, the First Examination Report (FER) was issued raising objections under Section 2(1)(ja), Sections 3(c), (d), (e), (i), (j) and Sub-Sections 4 & 5 of Section 10 of the Patents Act, 1970 (the Patents Act). The appellants submitted a reply thereto. By hearing notice dated 01.11.2019, most of the above mentioned objections were maintained. Pursuant to the hearing notice, the appellants filed 17 amended claims, which were considered and rejected by the impugned order.

3. Learned counsel for the appellants invited my attention to the impugned order and, in particular, the manner in which the impugned order dealt with objections 5, 7-8 in the FER. With reference to the objection in paragraph 5 of the FER, learned counsel pointed out that the complete specification contains 69 working examples. Therefore, she submitted that it was incumbent on the Controller to state specifically as to how the working examples provided by the appellants do not satisfy the requirements of Section 10(4) of the Patents Act. In this connection, learned counsel pointed out that Section 10(4)(b) only requires the patent applicant to disclose the best method for performing the invention, which is known to the applicant and for which the applicant claims protection.

4. Learned counsel submitted that the Controller has proceeded on the erroneous assumption that a broad claim is impermissible under the Patents Act. Turning to the objections in paragraphs 7 and 8 of the FER, learned counsel pointed out that the Controller has merely recorded conclusions that the amended claims do not meet the requirement of Section 10(5) of the Patents Act with regard to clarity and succinctness. With regard to this objection also, learned counsel submitted that it is incumbent on the Controller to state precisely with reference to specific claims as to why such claims lack clarity or succinctness. With regard to paragraph 8 of the FER, learned counsel pointed out that it is recorded therein that multiple independent claims must be avoided, whereas no such limitation is imposed under any of the provisions of the Patents Act. Therefore, learned counsel submitted that the impugned order calls for interference and that the matter be remanded for reconsideration.

5. In response to these conten