Delhi High Court clarifies Section 3(d) objections in setting aside Indian Patent Office refusal order

In Nippon Steel v The Controller General of Patents, Designs, and Trademarks (CA (COMM IPD-PAT) 323/2022, 2024:DHC:6514), the Delhi High Court has adjudicated on core issues concerning patent eligibility assessments of inventions under Section 3(d) of the Patents Act 1970. The court set aside the Indian Patent Office (IPO)’s refusal order from 16 March 2024 and remanded the matter for reconsideration.

Section 3(d) bars the patenting of inventions relating to:

the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant [emphasis added].

Nippon Steel filed an Indian patent application titled “Method for repairing inside of gas flue or coke oven and device for repairing inside of gas flue”, in which the main claim (Claim 1) was directed to a way to repair the inside of a coke oven’s gas flue. Claims 2 and 3 were directed to a device for repairing the inside of a gas flue (8620/DELNP/2012). The application was refused by the IPO under Section 3(d) without raising any explicit objections in the hearing notice (which merely mentioned a general objection under “Section 3”).

The plaintiff contended that an explicit objection related to Section 3(d) was neither raised in the first examination report nor in the hearing notice (the IPO’s objections in the hearing notice only pertained to Section 2(1)(j) and “Section 3” of the Patents Act). Devoid of any fair opportunity to deal with an explicit Section 3(d) objection, Nippon Steel argued that this constituted a clear violation of the principles of natural justice.

It further contended that the IPO’s impugned order was cryptic and lacked proper reasoning as to why the claimed invention was prohibited under Section 3(d). Refusing to grant the patent without analyzing the invention’s technical aspects was erroneous as the IPO had wrongly held that the method of repair, if used in conjunction with a device, would simply be part of the device’s manual and would thus fall under Section 3(d).

The court carried out a detailed analysis, noting that the impugned order only addressed the method covered by Claim 1 of the application. It held that this method claim was objected to under Section 3(d) for being a “mere use of a known process, machine, or apparatus”. The court further pointed out that no prior art documents were cited in the hearing nor the impugned order to indicate that the device for implementing the method of Claim 1 was known. Further, no objection regarding the device’s novelty or inventive step was raised anywhere in the hearing notice nor the impugned order. This rendered the said “known process, machine, or apparatus” unclear. As a result, the application’s claims were barred under Section 3(d) of the Patents Act.

While it agreed with Nippon Steel, the court held that the case resonates with the findings of the coordinate bench in DS Biopharma v The Controller of Patents and Designs, which held that the order rejecting the patent application was not sustainable due to lack of proper identification of “known substance” in the hearing notice and lack of adequate opportunity to deal with the objection under Section 3(d) (CA (COMM IPD-PAT) 6/2021).

Ultimately, the court set aside the order for:

violating the principles of natural justice;

lacking technical analysis of the claimed method;

not applying any test or standard for patent eligibility of the subject matter; and

for not identifying the known device due to which Section 3(d) was raised.

While the matter was remanded to the IPO for fresh consideration, the court also surprisingly directed it to provide an opportunity for Nippon Steel to respond to the following questions and subsequently render the decision by dealing with these on top of Section 3(d) objection:

Does Claim 1 cover the use of claims disguised as method claims, which are not considered an invention under Section 2(1)(j)?

Is Claim 1 barred under Section 3(n) for being a mere presentation of information?

Does the invention covered in Claims 1, 2, and 3 meet the requirements under Section 2(1)(j) – novelty, inventive step, and industrial application?

While the decision deals with core issues surrounding the assessment of Section 3(d) objection, it is interesting that the court has also directed the IPO to delve deeper into other patentability nuances of the invention.

This decision is expected to bring about significant improvements in the IPO’s practice when it comes to dealing with Section 3(d) objections, as it necessitates the requirement to provide concrete reasoning or evidence on the applicability of such an objection.