Lacks Inventive Step: Madras High Court Denies Patent To IIT-Madras' Method Of Doping Potassium In Ammonium Perchlorate

Justice Senthilkumar Ramamoorthy noted that there was no experimental data to show that the method had an economic significance. Further, the court also noted that the claimed invention lacked an inventive step under Section 2(1)(ja) of the Patents Act.

“I conclude that without any experimental data to compare the costs of using filtrate material, which requires frequent changing, vis-a-vis using an external reagent, the economic significance of the claimed invention cannot be established. Because of these reasons, I conclude that the claimed invention lacks an inventive step under Section 2(1)(ja) of the Patents Act,” the court said.

IITM applied for a patent on September 10, 2013, which was published on December 25, 2015, and the First Examination report was issued on October 1st, 2018. The FER raised objections on the grounds that the invention lacked novelty, and inventive step and was patent-ineligible under Section 3(d) of the Patent Act. Thereafter, the Controller of Patents and Designs refused the application under Sections 2(1)(ja), 3(d), and 3(a).

IITM claimed that the rejection was untenable. It was pointed out that the invention's exclusion under the Act as being frivolous was the first time raised in the order and that the institute was denied an opportunity to respond to the objection.

It was further claimed that during the filtering process, the Ammonium Perchlorate acquires potassium from the filtering material and that the product acquired as a result of the known process is new. The institute added that using a filtrate material like a stainless steel sieve, cotton cloth or filter paper made the invention novel, creating a new product. It submitted that since there was a significant cost reduction, the process had wide economic significance also.

The court agreed with the institute in that the objection on the ground of invention being frivolous was conspicuous due to it being brought up first in the impugned order. The court noted that since the applicant was not given an opportunity to respond to that particular objection, the principles of natural justice as well as the objective of the Act were contravened.

However, the court noted that the invention merely employed dissolution, filtration, heating, drying and reheating and the resultant product was also a mere variant of an already existing product. Thus, noting that a new reactant was not used while adopting the known process, the court conclude that the claimed invention was excluded from patentability under Section 3(d) of the Patents Act.

Thus, the court opined that the application was rightly rejected under Section 3(d) and 2(1)(ja) of the Patent Act and affirmed the order of the Controller of Patent and Design.

Counsel for the Petitioner: Mr. T.K. Ramkumar for M/S. Ram and Rajan & Associates

Counsel for the Respondent: Mr. Rajesh Vivekananthan, Deputy Solicitor General

Citation: 2024 LiveLaw (Mad) 257

Case Title: Indian Institute of Technology v The Controller of Patents & Designs

Case No: (T) CMA (PT) No.52 of 2023