Tapas Chatterjee v. Assistant Controller of Patents and Designs & Anr.

Relevant Acts and provisions

Patents Act, 1970

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

Provisions considered: Sections 2(1)(ja), 3(d) and 117A of the Patents Act, 1970, on inventive step and known-process patentability.

Brief facts

The appellant's patent application for a process yielding magnesium sulphate and activated carbon was rejected by the Assistant Controller as obvious under Section 2(1)(ja) and as a mere use of a known process not producing a new product under Section 3(d), relying on two cited prior art documents. A Single Judge dismissed the challenge to that rejection, leading to a Letters Patent Appeal contending that the Controller's order lacked the reasoned analysis obviousness determinations require and had misapplied Section 3(d) to a process claim yielding new products.

Issues before the Court

1. Did the Controller's obviousness rejection meet the reasoned-analysis standard under Section 2(1)(ja)?
2. Were the process's products new products taking it outside the Section 3(d) bar on known processes?

Court's findings

The Court held that a finding of obviousness cannot rest on a bare assertion that the claimed invention follows from cited prior art; the decision-maker must identify the person skilled in the art, articulate the inventive concept, identify the differences between the prior art and the claim, and explain why those differences would have been obvious. It found the Controller's order fell short of this standard, offering conclusory reasoning rather than the detailed explanation obviousness rejections demand.

On Section 3(d), the Court held that the provision bars patenting the mere discovery of a new use for a known process, but does not bar a claim to a known process where that process yields products not disclosed in the cited prior art; here the products were not shown in either cited document, so the process could not be rejected as merely a known process producing a known result.

The Court emphasised that appellate powers extend to setting aside patent office and single-judge determinations that fail to engage properly with the statutory tests.

Decision

Appeal allowed; the orders of the Assistant Controller and the Single Judge were set aside and the application remanded for fresh, reasoned examination.

Cases cited

• F. Hoffmann-La Roche Ltd. v. Cipla Ltd., 2015 SCC OnLine Del 13619

Authorities referred to in the decision. Please verify each citation in the judgment itself.

Keywords

Inventive Step Known Process Obviousness Patent Prosecution Section 3(d)