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IN THE HIGH COURT OF DELHI AT NEW DELHI

Reserved on 9^th May, 2022

Date of decision: 5^th July, 2022.

+

C.A.(COMM.IPD-PAT) 11/2022

NIPPON A&L INC.

..... Appellant

Through:

Mr. Jogeshwar Mishra and Ms. Sahay

Advocates. (M:9717892432)

versus

THE CONTROLLER OF PATENTS

..... Respondent

Through:

Mr. Harish V. Shankar, CGSC with

Ms. S. Bushra Kazim, Ms. Mehlawat

Sagar and Mr. Srish Kumar Mishra,

Advocates for UOI. (M:9810788606)

CORAM:

JUSTICE PRATHIBA M. SINGH

JUDGMENT

Prathiba M. Singh, J.

1. This pronouncement has been done through hybrid conferencing.

Background

2. The present appeal challenges the impugned order dated 15^th March,

2021 passed under section 15 of the Patents Act, 1970 (hereinafter ‘Act’).

Vide the impugned order, the Appellant’s application for the grant of patent

has been rejected by the Deputy Controller of Patents.

3. The

Appellant/Applicant-

Nippon

A&L

Inc.

“Appellant”) had filed a patent application in Japan bearing no. 2013153727

seeking patent protection for a “copolymer latex” product and process on

24^th July, 2013. Thereafter, application bearing no. 201617003704 dated 2^nd

February, 2016 was filed as the Indian national phase entry of international

application PCT/JP2014/069608. A request for examination of Appellant’s

application was filed on 15^th March, 2017. The said application was

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/002434

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examined and First Examination Report (FER) was issued on 22^nd

November, 2019. In the FER, objections relating to inventive step under

Section 2(1) (ja) of the Act, non-patentability under Sections 3(d) & 3(e) of

the Act were raised by the Patent Office. The Patent Office further raised an

objection that the scope for which protection was sought was not clear from

the wording of the claims.

4. A response to the FER dated 18^th May, 2020 was submitted by the

Appellant along with an amended set of claims. It was contended by the

Appellant in its response that the invention in question cannot be conceived

from the prior art. It was also argued that objections under Sections 3(d) and

3(e) of the Act were not attracted. The Respondent on 18^th September, 2020

issued a hearing notice under section 14 of the Act. One of the objections

taken in the hearing notice was that claims 1, 2, 4 and 6 were not properly

drafted and the scope for which protection was sought was not clear.

Therefore, the applicant was asked to redraft the claims. Objections under

Sections 2(1)(j), 2(1)(ja), 3(d), 3(e) of the Act were also raised in the hearing

notice.

5. The hearing took place on 11^th January, 2021. In the hearing,

Appellant’s Agent appeared and detailed oral submissions were stated to

have been made on the objections raised in the hearing notice. The

Appellant also proposed amending the claims, which were previously

defined in ‘product by process’format characterised by features of both the

product and the process, to ‘process only’ claims to render the claims clearer

and more definite. On 24^th January, 2021, Appellant’s Agent filed written

submissions encapsulating the oral arguments along with a fresh set of

amended claims. The original set of claims and the final amended set of

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/002434

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claims as filed on 24^th January, 2021 are set out below:

Claim

No.

Claim as originally filed on

2^nd February, 2016

Claim as amended on 24^th

January, 2021

Claim 1

A copolymer latex being obtained

by

emulsion

polymerization,

wherein the copolymer comprises

monomer components comprising:

15 to 60% by mass of (a) an

aliphatic

conjugated

dienic

monomer;

5 to 35% by mass of (b) an

ethylenic unsaturated carboxylic

acid monomer;

5to 30% by mass of (c) a vinyl

cyanide monomer; and

0 to 75% by mass of (d) a monomer

copolymerizable therewith, and

wherein

the

emulsion

polymerizatio