From refusal to grant: India Patent Oﬃce grants a patent after the High Court orders reconsideration
In a recent order of the Indian Patent Office, a patent application was granted after a fresh consideration was ordered by the Hon’ble Delhi High Court in the case of Nripendra Kashyap (Element Six Technologies Limited) vs Controller Of Patents And Design [C.A.(COMM.IPD-PAT) 206/2022]. The Applicant had faced objection under Section 3(d) of the Indian Patents Act (hereinafter referred to as “Act”) during the hearing stage, leading to a refusal order in respect of 10 pending claims. The Applicant filed an appeal before the High Court and submitted to drop the objected claims and proceed with the remaining claims. Resultantly, the Hon'ble Court remanded the matter to the Indian Patent Office for fresh consideration.
The Applicant (Element Six Limited) filed an application bearing no. 10030/DELNP/2011 (hereinafter referred to as “subject application”) for the grant of a patent titled “Method for treating single crystal CVD diamond and product obtained” claiming the priority to PCT Application No- PCT/EP2010/059078 dated June 25, 2010, which in-turn claimed the priority of multiple number of United Kingdom applications. The subject application relates to a method of irradiating and annealing CVD diamond material to produce fancy pale pink coloured diamonds.
Subsequent to the issuance of a First Examination Report (hereinafter referred to as “Office Action”), the Applicant filed a reply and reduced the originally filed claims from 37 to 21. Thereafter, a hearing vide a letter dated August 23, 2017, was held on September 22, 2017, with respect to objections relating to Novelty, Inventive Step and non-patentability under Section 3(d) of the Act.
A detailed submission was filed by the Applicant in response to the hearing, however, the Controller (Respondent) vide an order (hereinafter referred to as “impugned order”) dated November 22, 2019, refused the subject application under Section 3(d) of the Act and noted that “even if the process leads to synthetic crystal diamond but it leads to the mere discovery of a new form of the known substance synthetic crystal diamond without any enhancement of the known efficacy… the colour characteristics and other characteristic properties as claimed from claim 12-21 are mere discovery of the new property of the known substance .i.e. the synthetic crystal diamond and thereby is not allowable under Section 3(d) of the Act.”
Consequently, an Appeal [C.A.( COMM.IPD-PAT) 206/2022] was filed by the Applicant under Section 117A of the Act challenging the impugned order. During the Appeal, the Applicant indicated that they no longer wished to pursue claims 12-21 and asserted that the subject application should still be considered for the remaining claims 1-11. The Respondent agreed that the subject application can be remanded for fresh consideration of the remaining claims 1-11. Accordingly, the Hon’ble Court remanded the subject application back to the Controller for offering a hearing to the Applicant and deciding the matter within 4 months with respect to claims 1-11.
In pursuance of the order issued by the Hon’ble Court, a hearing concerning the subject patent application with claims 1-11 was offered to the Applicant. In the final order dated May 23,2023, the Controller noted that the initial refusal order was related to claims 12-21 only, and there were no objections raised against claims 1-11 in the original hearing notice (against which a refusal order was issued by the Controller). Therefore, the Controller allowed the subject application with claims 1-11 to proceed for the grant based on the order of the Hon’ble Court.
Importantly, the Controller rejected the Applicant's contention regarding the possibility of future reinstatement of excluded matter or the filing of subsequent divisional applications based on any matter in the original application and asserted that the issue of claims 12-21 was already addressed by the Hon’ble Court based on the Applicant's own submission.
Finally, the subject application was granted with 11 claims, and any further claims or reinstatements beyond this were not considered valid as per the decision of the Hon’ble Court.