This article delves into a recent appellate decision regarding the evaluation of inventive step in the absence of experimental data, specifically focusing on the case involving the method of doping potassium into ammonium perchlorate (AP) to increase burn rates in solid propellants.

Background of the Case:
The appeal was lodged against an order dated April 20, 2020, where the Controller refused the patent application under Sections 2(1)(ja), 3(d), and 3(a) of the Patents Act, 1970. The appellant's invention pertained to a method of doping potassium into AP, a process claimed to enhance the burn rates of solid propellants used in defense and space applications.

Grounds of Appeal and Legal Contentions:
Inventive Step under Section 2(1)(ja):
The appellant argued that the invention's use of filtering material without external reagents to produce a new product with enhanced burn rates constitutes an inventive step. Section 2(1)(ja) defines an inventive step as a feature of an invention that involves a technical advance compared to existing knowledge or has economic significance, or both, and is not obvious to a person skilled in the art.

Exclusion under Section 3(a):
The Appellant asserted that the objection under Section 3(a), which relates to the invention being frivolous or contrary to well-established natural laws, was not raised during the initial examination but appeared for the first time in the impugned order. The court found this inclusion to violate principles of natural justice, as the appellant was not given an opportunity to respond to this new ground, rendering this part of the Controller's decision unsustainable.

Exclusion under Section 3(d):
Section 3(d) excludes the mere discovery of a new form of a known substance unless it results in the enhancement of the known efficacy, the discovery of any new property or new use for a known substance, and the use of a known process, machine, or apparatus unless it results in a new product or employs a new reactant. The court observed that the invention's process—comprising dissolution, filtration, heating, drying, and reheating—utilized known methods without introducing a new reactant, leading to the conclusion that the invention is not patentable under this section.

Court's Analysis and Decision:
Lack of Experimental Data and Inventive Step (Section 2(1)(ja)):
The court held that for an invention to demonstrate an inventive step, it must show a technical advancement or economic significance that is not obvious to someone skilled in the field. "The appellant failed to provide experimental data to substantiate the economic advantages of using filtering material over external reagents. Without such data, the court could not assess the purported economic significance, leading to the conclusion that the claimed invention lacked an inventive step."

Procedural Violation (Section 3(a)):
The court highlighted procedural lapses in invoking Section 3(a) without prior notice to the appellant. This contravention of natural justice principles rendered the Controller's decision on this ground unsupportable.

Known Processes (Section 3(d)):
Since the claimed invention employed known processes without resulting in a new product or using a new reactant, the court upheld the exclusion under Section 3(d).

Conclusion:
The appellate court's decision reaffirms the stringent requirements for establishing an inventive step under Indian patent law. The absence of experimental data to demonstrate the claimed economic benefits was pivotal in sustaining the rejection under Section 2(1)(ja). While procedural fairness led to overturning the rejection under Section 3(a), the reliance on known processes without significant advancement or new reactants substantiated the rejection under Section 3(d).

Case Citation: Indian Institute of Technology Vs Controller of Patent and Designs: 11.06.2024: OA/56/2020/PT/CHN:2024:MHC:2264: Senthil Kumar Ramamoorthy. H.J.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539