INDIA: High Court examines the patentability of atomic energy-based inventions

Introduction

The Hon’ble High Court of Bombay in the case of Ceres Intellectual Property Company Limited v/s. The Controller of Patents, Trademarks & Designs & 2 Ors.[1], while setting aside the refusal order for a patent application titled “method for deposition of ceramic films for the use in manufacture of solid oxide fuel cells” held that the Controller of Patents cannot refuse a patent application for an invention which may fall under the scope of Section 20(1) of the Atomic Energy Act, 1962 merely on the basis of the directions from the Department of Atomic Energy.

Background

The present writ was instituted by Ceres Intellectual Property Company Limited (hereinafter the “Petitioner”) challenging the impugned order by the Controller of Patents (hereinafter the “Respondent”) whereby patent application filed by the Petitioner was rejected in view of the directions from the Department of Atomic Energy and Section 4 of the Patents Act, 1970.

It was the case of the Petitioner that they were not given reasons for rejection of their patent application except that “in view of the directions from the Department of Atomic Energy and Section 4 of the Patents Act, 1970, patent cannot be granted in respect of the intervention in the instant application”. It was the case of the Petitioner that the order was devoid of concrete reasons and thus, in violation of the principles of natural justice.

The Respondent, on the other hand, argued that the patent application of the Petitioner was sent to the department of Atomic Energy and the same was rejected as per the directions issued by the Department of the Atomic Energy. In light of the same, it was alleged by the Respondent that the rejection was legal and proper in view of Section 20(1) of the Atomic Energy Act 1962.

Findings of the Court

The Court, while placing reliance on the impugned order held that the patent application was refused only on the basis of the directions issued by the Department of Atomic Energy. As per the Hon’ble Court, if a patent application engulfs within its fold, the circumstances and/or inventions as detailed in Section 20(1) of the year 1962, the Authority has got powers to reject the patent application. However, the same is to be borne out from the reasons in the order, which was absent in the present case.

The writ was accordingly decided in favor of the Petitioner and the patent application was sent back to the Respondent for expeditious fresh consideration.

Conclusion

This is a first of its kind order, providing valuable guidance on the patentability of atomic related inventions, which have burgeoned considerably in the recent past. Apart from highlighting the requirements of the principles of natural justice for consideration of a refusal order, this order also envisages the requirements to be met for an atomic based invention under Section 20(1) of the Atomic Energy Act 1962.

[1]Writ Petition No. 2257 of 2018