In a recent appeal filed by the University of Copenhagen (the Appellant) against the Indian Patent Office, the Intellectual Property Appellate Board (IPAB) had set aside the order1 of the Controller dated May 06, 2020, thereby allowing the grant of patent for the application 531/ DELNP/2013. The Appellant's patent application was earlier refused by the Controller under Section 15 of the Patents Act, 1970 (Act). The order not only throws light on the thin boundary that separates naturally occurring mutants with the artificial products with regards to Section 3(C) of the Act, it also further interprets search and examination procedure to be followed by the Indian Patent Office (IPO) under section 13 of the Patents Act, 1970, especially in cases where lack of unity of invention is a concern.
FACTS & ISSUES OF THE CASE
In the instant case, the Appellant had filed a patent vide PCT national phase Application No. PCT/ EP2011/004565 on July 06, 2011, for an invention titled 'GLUCOSINOLATE TRANSPORTER PROTEIN AND USES THEREOF'. The said application was assigned application no. 531/ DELNP/2013. The Respondent issued a First Examination Report (FER) on July 02, 2018, wherein the following objections were raised:
- The FER objected to claims 22 to 28 owing to plurality of
distinct inventions and therefore the Controller
restricted the examination report to Invention 1 having claims 1-21
D1 teaches glucosinolate transport proteins, biochemical characterization of glucosinolate transport activity; identification of glucosinolate transporters in Brassica spp. based on homology and in silico screening, complemented with glucosinolate uptake assays; D2 teaches function genomics approach based on expression cloning in Xenopus oocytes as well as glucosinolates transport in Arabidopsis thaliana and provides a pool of 239 genes in an Arabidopsis thaliana transporter library that includes Atlg69870. D3 discloses potential transporter molecules that show 100% sequence identity to present glucosinolate transporter GTR1 from Arabidopsis.
Based on the observation made from D1-D3, the Controller denied to acknowledge the inventive step in claims 1-21.
- Claims 19 and 20 were deemed not allowed as the subject matter falls into the scope of section 3(j) of the Act (A plant or plant part and seed from said plant claimed in claims 19 and 20 are non-patentable subject matter as per provision of Section 3(j) of the Patents Act. Besides, the plant claimed in claim 19 is a claim by way of product-by-process, which is not allowable).
- Further claims 1-28 lack Unity of Invention as per section 10(5) of the Act as they constitute 7 different inventions with the common feature, among the subject matters of claims mentioned in above said groups of inventions, being that they refer to DNA and polypeptide molecules that encode putative glucosinolate transporter molecules.
- Claims 14-16, 21 were objected for lack of clarity, conciseness and definitiveness.
- A hearing notice was issued to the appellant on 03/01/2020 wherein objections regarding clarity and conciseness, non-patentability u/s 3 & unity of Invention u/s 10(5) were retained.
The Appellant submitted that Tables l to 3f of the 'as filed' specification depicts a number of mutations in Arabidopsis and Brassica GTR sequences. Also, example 5 of the specification which is a representative example demonstrating the generation and characterization of mutant GTRI and GTR2 alleles with altered phosphorylation/ dephosphorylation status. Therefore, the 'as filed' specification (especially example 5) discloses the artificial product (mutant). Since the mutant GTR allele is prepared by the Appellant, claim 17 of the subject application does not fall under the prohibition of Section 3(c). Regarding the claim language, the Appellant submitted that the mutant GTR allele is sufficiently claimed in claim 17 in terms of amino acid and nucleic acid sequences of the GTR protein. Therefore, the wording of the claim language in the context of the present invention were submitted to be appropriate by the Appellant.
Decision and Analysis
With regards to the identified 7 different inventions, IPAB invoked section 12 & 10 of the Act and held that "while the objection with regard to 'unity of invention' can well be taken if the plurality of invention is found to have been claimed but restricting the examination to any chosen set of claims by the Controller is not mandated by the Patents Act, 1970, particularly so when the fee in respect of examination of all the claims are paid by the applicant". IPAB further stated that ISA objections on 'Unity of Invention' are verbatim matching with the objection raised by the learned Controller in the instant application.
The International Searching Authority (ISA) do not conduct search for multiple sets of claims once a single search fee is paid, which is generally intimated to the applicant on receipt of corresponding fee, wherein multiple sets of inventions are identified. The IPAB explained that similar analogy should not be applied to Indian Patent Office under Section 13 of the Patents Act, 1970 as "the fee in respect of all the claims is paid before search and examination under the Act and Rules made thereunder, the search and examination of all the claims is supposed to be carried out by the examiner". Further, IPAB stated that the law does not provide the option to choose any particular set of claims, as per the convenience of the Controller for conducting search and examination.
The primary issue, in this case, was whether the patent application merited is inventive in light of section 3(c). The objected claims 17 under section 3 (c) holding that "as there is no establishment of the non-natural or artificial claimed product" along with another statement of the respondent that "It is well known that produced mutants are not natural but the mutant should have its definite structure" makes the order issued by the respondent quite contradictory. With regards to the same, IPAB had considered the arguments of the Appellant, hence allowed the request and directed the Appellant to delete Claim 17 thereby allowing claims 1-16. Accordingly, the IPAB allowed the appeal, set aside the impugned order, and directed the Respondent to grant the Appellant's patent.
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