Patent appeal against rejection of a divisional application. Following the Delhi High Court's Syngenta decision and this Court's Gensquare ruling, the Court held claims in a divisional application need only flow from the parent specification, not the parent claims, and set aside the rejection, remitting for denovo examination.
This page shows the compact analysis of this judgement. The full analysis — procedural history, issue-by-issue holdings with ratio and obiter, advocates, and paragraph-level evidence for every claim — is being added to the record in batches and will appear here when this judgement has been through it.
CMA (PT) No.15 of 2024
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved on : 18.07.2024 Pronounced on : 26.07.2024
CORAM:
THE HON`BLE MR.JUSTICE P.B.BALAJI
CMA (PT) No.15 of 2024
VICTAULIC COMPANY, 4901 Kesselersville Road, Easton Pennsylvania 18040, USA
Rep. by its Power of Attorney Mr.R.R.Nair .. Appellant
The Controller of Patents and Designs, Government of India, Patent Office, Intellectual Property Rights Building, GST Road, Guindy, Chennai - 600 032.
.. Respondent
Prayer : This Civil Miscellaneous Appeal filed under Section 117-A of the Patents Act, 1970, praying to set aside the impugned order passed by the Joint Controller of Patents and Designs,the Patent Office, Delhi, dated 08.12.2023 rejecting the Grant of Patent and consequently direct Grant of the Patent in respect of the Appellant's Application No.201948026247.
For Appellant : Mr.P.V.Balasubramanian for M/s.BFS Legal
For Respondent : Mrs.A.Anuradha Central Government Standing Counsel
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J U D G M E N T
This appeal has been preferred challenging the rejection of the patent application of the appellant in Application No. 201948026247 dated 08.12.2023.
2.I have heard Mr.P.V.Balasubramanian, learned Senior Counsel for M/s.BFS Legal, learned counsel for the petitioner and Mrs.A.Anuradha, learned Central Government Standing Counsel appearing for the respondent.
3.Mr.P.V.Balasubramanian, learned Senior Counsel would submit that the respondent/Controller has passed the impugned order against the dictum of the Hon'ble Division Bench of the Delhi High Court in Syngenta limited Vs. Controller of Patents and Designs reported in 2023 SCC Online Del 6392 .
4.I have gone through the impugned order of rejection passed by the respondent/Controller.
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6.The Judgment of the Delhi High Court has been followed by this Court also in CMA (PT) No.35 of 2023 dated 13.03.2024 in the case of GENSQUARE LLC Vs. The Assistant Controller of Patents and Design, Patent Office, Chennai , where this Court, taking note of the decision of the Hon'ble Division Bench of the Delhi High Court, held that the Patent Act only requires that the divisional application ought to flow from the specifications in the parent application, and it does not say that the claims made in the divisional application to flow from the claims made in the parent application. Hence, the issue is no longer res judicata . Unfortunately, the respondent has acted against the ratio laid down by the Hon'ble Division Bench of the Delhi High Court in Syngenta Limited's case and on this limited ground alone, the rejection order passed by the respondent deserves to be set aside.
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CMA (PT) No.15 of 2024
respondent for
7.In fine, the appeal is allowed and the matter is remitted to the
respondent for denovo examination , after affording an opportunity by way of a fresh hearing to the appellant. In order to avoid embarrassment to parties, a different Patent Controller shall be assigned for the scrutiny of the patent application and such exercise shall be completed within a period of three months from the date of receipt of copy of this judgement. There shall be no order as to costs.
26.07.2024
Index : Yes/No Speaking/Non-speaking order ata
To
The Controller of Patents and Designs, Government of India, Patent Office, Intellectual Property Rights Building, GST Road, Guindy, Chennai - 600 032.
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CMA (PT) No.15 of 2024
P.B.BALAJI,J.
ata
CMA (PT) No.15 of 2024
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CMA (PT) No.15 of 2024
26.07.2024
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1 issue framed by the court
Whether the Controller could reject a divisional patent application on the ground that its claims did not flow from the claims of the parent application.
Colour shows how this judgement treated each authority
Syngenta Limited Vs. Controller of Patents and DesignsFollowed¶6
2023 SCC Online Del 6392 · Who else cites this
GENSQUARE LLC Vs. The Assistant Controller of Patents and Design, Patent Office, ChennaiRelied on¶6
CMA (PT) No.35 of 2023 dated 13.03.2024
1 provisions across 1 enactments
Victaulic Company, rep. by its Power of Attorney Mr.R.R.Nair
The Controller of Patents and Designs, Government of India
P.B.Balaji
As recorded by the court registry
Judgements on the same questions, provisions and authorities, from every court
