ORDER
S. Chandrasekaran, Technical Member
1. This is a transferred appeal from the Hon’ble High Court of Bombay and numbered as M.P. No. 5 of 2006 against the order of the learned Controller of Patents under Section 15 of the Patents Act 1970 in respect of an application No. IN/PCT/2002/00221/MUM filed on 21.02.2002 being the National Phase Application based upon the International PCT application No. PCT/CH00/00562 dated 18.10.2000.
2. The brief facts of the case are that a National Phase Application was filed by the appellants for grant of a patent for an invention titled “TOPOLOGICALLY STRUCTURED POLYMER COATING AND A METHOD OF CREATING THEREOF” based on the International PCT application filed at Switzerland having a priority based on a National application filed in U.K. on 19.10.1999. The appellant made a request for the examination of the said National Phase Application on 16.08.2004 and accordingly, the Patent Office, Mumbai examined the patent application and a first examination report was issued on 23.11.2004. The learned Assistant Controller communicated to the appellant by his first examination report the following main technical objections:
(i) The product as claimed in the claims 25-46 falls under Section 5(1)(b) of the Patents (Amendment) Act, 2002 and hence they are not patentable;
(ii) The invention as claimed in the claim 47 does not fall within the scope of Section 2(1)(j) of the Patents Act and therefore, not allowed.
(iii) The invention as claimed in the claims 18-20 lack in novelty for instance see International Preliminary Examination Report & document cited thereof.
(iv) Invention as claimed in the claims 1-47 lacks in inventive step for instance see International Preliminary Examination Report and documents cited thereof.
The learned Assistant Controller has given a time of 12 months from the date of the Examination Report to comply with all these technical requirements. Accordingly, the appellant’s (who were the applicant for the patent) attorney refiled the documents on 22.03.2005 making necessary observations against the above referred technical objections. Together with this resubmission, they also submitted details of the patent applications filed in foreign countries substantially for the same invention along with necessary petition under Rule 137 and 138, as required under Rule 12 of the Patent Rules, 2003. Thereafter, the learned Examiner once again examined the resubmitted documents and informed the appellant’s attorney orally on 22.11.2005 about the technical objections still maintained as mentioned in the first examination report. Subsequently appellant’s attorney submitted the documents wherein claim 1 and 19 were amended giving the detailed observations against the cited specifications, mentioned in the International Preliminary Examination Report referred to in the said first examination report of the IPO. Also the appellant’s attorney requested for an opportunity of being heard if the amendments made by them did not appear to be complying with the office technical requirements. Together with this letter, the appellant’s attorney also filed a copy of the communication from the European Patent Office for the corresponding application which sets out the observation on the claims regarding the requirements of the patentability. The amended documents resubmitted by the appellant’s attorney were examined again by the learned examiner who found the amended documents still not being in order for grant. Accordingly, opportunity of hearing was offered to the applicants and during the hearing on 23.11.2005 the appellants (who were the applicants for this patent application) refiled another set of amended claims which was also examined by the Examiner of Patents, but the learned Examiner has again maintained the original technical objections as stated in the first examination report. The learned Assistant Controller after considering the Examiner’s report and the amended claims submitted during the hearing issued the impugned order refusing the grant of patent on the said application.
3. Being aggrieved by this order, the applicants went for appeal before the Hon’ble High Court of Bombay (M.P. No. 5 of 2006) and with the formation of this Board, the matter stood transferred to this Appellate Board and here renumbered as TA/6/2007/PT/MUM.
4. The appellants pointed out that the EPO has accepted all claims, which were identical to the claims filed in the Indian application, and thus contended, that EPO, in view of the identical state of art, as on file, in the present matter, came to the conclusion, that all these claims are new and involve an inventive step. The appellants further stated that the respondents failed to appreciate that claim 1 is a method claim, which defines the various individual steps of the method and also the novelty had been pinpointed by the characterization clause.
5. The appellants also stated that the respondents failed to appreciate that it is the prerogative of the appellants to have as broad a main claim as possible. They further added that the idea of having a main claim and the dependant claims in the patent specification is to ensure while the essential features of the invention is protected in the main claim, not so essential or specific features of the invention would be covered in the dependant claims. The appellants contended that the respondents failed to appreciate the product claim 18 and their conclusions that Claims 37 and 38 are arbitrary, in as much as the learned Examiner has nowhere raised such objection either in First Examination Report or in the subsequent official actions.
6. The appellants contended that the feature of cross linking material in a mixture according to claim 1 is maintained in an oriented status during cross linking, cannot be found in the European Patent cited specification. Thus, the appellants stated that these European Patent cited specifications do not stand as an anticipation and submitted that the respondents’ conclusion that claims 1 to 44 lacks inventive step is patently incorrect and it was also brought to the knowledge of the respondents that the EPO has accepted the very same claims as in the Indian Patent Application as Novel and Inventive over the said documents. The appellants also contented that when EPO has found that there is novelty, utility and non-obviousness, despite the citations that were available on their records should have normally persuaded, respondents to waive the objections of the Learned Examiner on the grounds of obviousness. Further there are no objections to patentability under Section 3 of the Patents Act. They further submitted that the impugned order of the Learned Controller is not only unjust but also illegal and require to be set aside.
7. The respondents No. 1 and 2 filed affidavit in reply before the Hon’ble High Court of Mumbai. The respondents No. 1 and 2 in their reply have submitted that the Controller of Patents sought the required amendments in the specification in order to satisfy the statutory provisions of the act by the communication of technical objections through the First Examination Report dated 23.11.2004 and in subsequent communication also it was conveyed to amend the specification. The respondents submitted that however on failure to do so, as directed, the Controller of Patents has used his powers to refuse the application under Section 15, that too only after affording the appellants an opportunity of hearing.
8. The respondents further submitted that the appellants have failed to limit the scope of the invention claimed in the claims. They also submitted that it was not clear from the claims as to which materials are cross-linkable and which are not linkable materials. They also stated that the invention claimed in claims 39 to 44 is related to an optical component, but that feature was missing in the principal claim 1, which goes to defeat the principle of single inventive concept having group of inventive features. Further, these claims have not been supported by necessary description in the specification.
9. The respondents further submitted that well settled principles of claim drafting have not been followed in this application and additional features have been included in claim 18 which do not fall within the ambit and scope of the features claimed in the Principal claim and further more to add is that the claim 18 uses the uncertain and ambiguous terminology such as “and/or” in it, which goes much broader and wider than the scope of the features claimed in the principal claim.
10. The respondents have further stated that mere mentioning that EPO has waived all the novelty and inventive step objections, but accepted the claims as such will not suffice, but will have to be proved with sufficient documentary proof. The respondents finally added that the directives given by the Controller of Patents even in the hearing was not well taken by the appellant, they did not amend the specification as per the requirements, which had finally led to this situation of refusal of patent application under Section 15 of the Act.
11. The matter came up before this Board on 11.03.2008. Shri R. Muralidharan, learned Counsel appeared on behalf of the appellant and learned Counsel Shri Udaykumar, Senior Central Government Standing Counsel appeared on behalf of the respondents.
12. Shri Muralidharan, learned Counsel for the appellant argued that there has been total non-application of mind and the settled legal principles ignored. Further, the learned Counsel for the appellant submitted that the corresponding European Patent Applications having the same set of claims had proceeded to the grant of patent whereas the same has been rejected by the IPO. The learned Counsel further argued that the respondents should have passed an order of conditional acceptance of the application after suggesting amendments to be carried out so as to make the application in order for grant. He also added that the Patent Office has been raising fresh objections for the first time just two days prior to the last date for putting the application in order for grant which had caused great injustice and hardship to the appellant. Thus the Patent Office failed to discharge the obligations of “the theory of legitimate expectations” by not considering the relevant points in disposing of the patent application in appeal, the counsel submitted.
13. The learned Counsel for the appellant further contended that the learned Examiner has picked up an isolated expression and tried to project that the same is meaningless thereby stating that the claims are not definitive. Reliance was placed on the judgment of the Unites States Court of Appeals, Federal Circuit (Hockerson-Halberstadt, Inc., v. Converse Inc. 183 F.3d 1369 51 U.S.P.Q,2d (BNA) 1518 (Fed.Cir.1999) in which it was held that “Proper claim construction, however, demands interpretation of the entire claim in context and not a single expression in isolation”. The learned Counsel for the appellant relied upon another decision of the Unites States Court of Appeals, Federal Circuit in S3 Inc. v. Nvidia Corporation 259 F.3d 1364 (Fed.Cir.2001) wherein the Court found that “The purpose of claims is not to explain the technology or how its works, but to state the legal boundaries for the patent grant”. The learned Counsel for the appellant, next relied on the decision of the Unites States Court of Appeals, Federal Circuit in Agrizap, Inc. v. Woodstream Corp. , 431F. Supp. 2d 518 (E.D. Pa. 2006) wherein it was held that the claims cannot be considered as indefinite where the court can determine definition and scope of the disputed terms based on ordinary and customary meaning of those terms, context of surrounding words of claim and specification as a whole.
14. The learned Counsel for the appellant submitted that the objection regarding novelty about the claims 18-20 were made by the Patent Examiner because he has noticed the International Search Authority Report wherein the EPO has recorded these objections as part of its search report and contended that this exhibit (European Specifications) do not even teach remotely anything about the structuring of the surfaces. The learned Counsel for the appellants added that to constitute anticipation and defeat the novelty, the prior art reference must disclose each and every feature of the invention either explicitly or inherently. The counsel referred to the decision of the United States Court of Appeals, Federal Circuit in Glaxo Inc. and Glaxo Group Limited v. Novopharm Ltd. 52 F.3d 1043, 1047 (Fed. Cir. 1995).
15. The learned Counsel for the appellant submitted that India, after becoming a member of the WTO TRIPS Agreement, is obliged to comply with the “International Minimum Standard as guaranteed under Article 27 of the TRIPS Agreement”.
16. It is the submission of learned Counsel that the criteria for determination for novelty, utility and non-obviousness and the compliance of the best mode of requirement are the same all over the world. Only the statutory subject matter can differ from country to country. He also added that when the invention in question does not fall under the exceptions narrated under Section 3 of the Patents Act, 1970 the decision of the Patent Office in refusing a patent on the ground of lack of inventive step and non-compliance of the best mode of requirement is totally incorrect and contrary to the decision of the better equipped, more experienced International Patent Office. Thus the denial of the patent to the applicant is also violative of India’s obligation under Article 27 of the TRIPS Agreement it was contended. Finally it was urged that the impugned order be set aside with a direction to the respondent to allow the patent application in terms of the claims as accepted by the European Patent Office together with costs or the matter be remanded for fresh consideration in line with patent granted by EPO after affording an opportunity to amend, if necessary.
17. Learned Senior Standing Counsel for the respondents submitted that the necessary opportunity of hearing has been given to the appellants and even the amended claims submitted during the hearing have been examined and found to be not in order for grant. When the learned Controller directed the applicants to amend the claims, the appellants (who were the applicants for the patent application) were adamant in not making any amendments and hence the application for patent has rightly been refused as per Section 15 of the Patents Act, 1970. The appeal, it was contended, is thus liable to be dismissed.
18. We have considered the contentions and submission of the learned Counsel for the appellants and the respondents. It is a clear settled principle that if the invention claimed does not meet the requirements of the patentability criteria as laid down under Section 2(1)(j) or if it attracts the provisions of Section 3 (non-patentable inventions category), the Controller of Patents shall not grant a patent for the said invention. Hence the Controller of Patents being the custodian of patent rights, according to law, shall always examine the patent application in totality and when the technical objections are communicated to the applicant, and as a reply when the applicant submits the observations distinguishing the features of the invention vis-a-vis cited specifications, shall always consider those observations fully and then take a decision either to grant or to refuse the grant of patent. Particularly, when the patent application is refused and an order is issued in that respect he shall always give a reasoned order setting out the reasons upon which the application for patent has been refused. The Hon’ble Supreme Court in Union of India and Ors. v. Jaiprakash Singh and Anr. held, that “the right to reason is an indispensable part in any adjudication and spelling out the reasons in any order is a basic requirement”. In the said case, Supreme Court has held that the adjudicating authority should, while issuing an order set forth the reasons, however so brief, indicating the application of the mind and all the more when that order is amenable to further avenues of challenge for any redressal to the parties. In Alexander Machinery (Dudely) Ltd. v. Crabtree 1974 LCR 120 it was observed “Failure to give reasons amounts to denial of justice. Reasons are live links between the mind of the decision taker to the controversy in question and the decision or conclusion arrived at”. The aggrieved party can come to know why the decision in his case has gone against him. Therefore, one of the salutary requirements of principles of natural justice is spelling out reasons for the order made. In other words, it shall be speaking and reasoned order.
19. Provisions have been made very clearly in Section 15 of the Patents Act, 1970 vesting full powers to the Controller of Patents to refuse or to direct the applicants to amend the specification while granting a patent. Section 15 of the Patents Act, 1970 reads as below:
15. Power of Controller to refuse or require amended applications, etc., in certain case. – Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so.”
Therefore, from the above provisions it is very clear that where the Controller feels that the claims as well as the description of the complete specification needs to be amended before granting a patent, the applicant for patent is required to comply with the official technical objection if and when he seeks a grant of patent on his application. It is well known that the claim is usually drafted in a number of paragraphs serially numbered. The first claim is a main claim or the principal claim which is made as wide as possible and the subsidiary ones refer to the main or principal claim and include qualifying or exploratory clause on the various integers of the main or principal claim or optional features. There can also be few independent claims having independent features of the invention. But the totality of the claims must relate to a single inventive concept i.e., one invention only. It shall always be remembered that a claim is the statement of technical facts or matters expressed in legal terms defining the scope of the invention sought to be protected. Hence it is the duty of the inventor or the applicant for patent to give the fullest practical information to the public he is bound to put in, if, for instance the invention is a process or a method of making a product, quantities and the parameters which are the best he knows. Hence it is the primary object of the claim to limit the invention and not to extend the monopoly. Further the claims must undoubtedly be read as part of the entire documents and not as a separate document. It has been held by Lord Russel of Killowen in Electrical and Musical Instruments v. Lissen Ltd. (1939) 56 RPC 23 at 39 that “The forbidden field must be found in language of the claims and not elsewhere.
20. As already observed, the reasons for refusal of grant of patent should be clear, explicit and not vague. As stated in the case of Alexander Machinery (Dudely) Ltd. v. Crabtree 1974 LCR 120 (supra) “Reasons are live links between the mind of the decision taker to the controversy in question and the decision or conclusion arrived at”. Therefore, it is very clear the aggrieved party can come to know why a refusal of his patent case has taken place. Whereas in the case on hand, the refusal order, as contended by the appellants here is a mere narration of the Examiner’s technical objections on the first part; the learned Controller’s further technical objection subsequently with very brief comments on the claims therein but not giving any reasons for the refusal. The refusal order shall always be clear, explicit and should show that the learned Controller of Patents has applied his mind, considered the observations of the applicant and discuss or analyze the same while refusing to proceed with the application. Hence we are not satisfied that the refusal order is sustainable. The learned Counsel for the appellants has also made a request before us that they should be given a chance and an opportunity to amend, if necessary, for the grant of patent on their application. We are, therefore, of the view that this application for patent be remanded back to the Patent Office with a direction that the Learned Controller of Patents shall afford again an opportunity of hearing to the party as per the provisions of law, consider any amendments if and when the applicants seek in line with the application and patent granted in EPO and then decide the matter in accordance with law.
21. In the result, the appeal is allowed in part, in terms of the above. However, there shall be no order as to the costs.