Bigtec Private Limited v. Assistant Controller of Patents and Designs

Relevant Acts and provisions

Patents Act, 1970

Section 117ASection 2(1)(ja)Section 3(c)

Provisions considered: Sections 2(1)(ja) and 3(c) of the Patents Act, 1970, in an appeal under Section 117A.

Brief facts

Bigtec appealed against an order rejecting its patent application for nucleotide sequences, reaction mixture, method and kit used to detect a virus by means of a probe and two primer sequences. The Assistant Controller refused the claims for lack of inventive step, holding that designing further oligonucleotide sequences was routine, and separately excluded the primer sequences under Section 3(c) as a mere discovery of sequences occurring in nature.

Issues before the Court

1. Did the Controller err in rejecting the claimed probe and primer sequences for lack of inventive step without discussing the appellant's evidence of unexpected amplification effects?
2. Do synthesised primer sequences used with a labelled probe fall within the Section 3(c) exclusion for mere discovery of a substance occurring in nature?

Court's findings

The Court held that the impugned order was silent on the amplification evidence submitted by the appellant comparing its claimed sequences with the prior art, even though that evidence was noted earlier in the order, and that the bare conclusion that devising probes and primers was routine experimentation could not stand without engaging with this evidence.

On Section 3(c), the Court observed that the exclusion applies only to a mere discovery of something by its isolation from nature, and does not extend to synthesised sequences, particularly where a sequence is conjugated with synthesised fluorophore and quencher labels.

The Court held that the conclusion that the primer sequences were unpatentable merely because the sequence listing identified a natural species of origin was recorded without addressing the appellant's explanation that this reflected a software convention, and required fresh reasoning.

Decision

Impugned order set aside; the matter was remanded to a different officer for reconsideration within a fixed period, with no opinion expressed on the merits.

Keywords

Biotechnology Inventive Step Patent Prosecution Prior Art Section 3(c)