Universitat Ulm Vs Assistant Controller Of Patents

The case Universitat Ulm vs Assistant Controller Of Patents And Designs was heard in the High Court of Judicature at Madras on July 3, 2024. Universitat Ulm, a German institution, filed an appeal under Section 117A of the Patents Act, 1970, against the Assistant Controller of Patents and Designs, Government of India, seeking to overturn an order from August 30, 2019, that rejected their patent application. 

The application, numbered 645/CHENP/2011, claimed a patent for the use of Opioids or Opioid Mimetics in treating resistant cancer patients. The grounds for rejection were not fully articulated in the document provided, but it was mentioned that the respondent found the patent to be obvious to a person skilled in the art based on the combined teachings of various prior art references (D1 to D5 and D7 to D10). 

Despite the appellant bringing to the respondent's attention that a US patent had been granted for a similar invention after considering the prior art (D6), the respondent did not discuss this in the impugned decision. Universitat Ulm has filed the appeal on the grounds that the Assistant Controller of Patents and Designs, Government of India, did not adequately discuss the prior art or the explanations provided by the appellant in their written submissions. They also pointed out that the respondent did not consider the fact that a US patent had been granted for a similar invention after taking into account the prior art, which was brought to the respondent's attention through Form-3. 

Additionally, the appellant's counsel argued that the respondent failed to discuss the synergistic effect of the treatment as mentioned in the appellant's written submissions. These omissions led to the appeal being filed under Section 117A of the Patents Act, 1970, with a prayer to set aside the order and allow the patent application to proceed to grant. 

The respondent's counsel, Mr. J. Madanagopal Rao, argued that the order was comprehensive and clearly stated that the patent was obvious to a person skilled in the art, based on the combination of teachings from multiple prior art references. He saw no need for a remand. 

Justice P.B. Balaji, after reviewing the arguments, found the rejection decision to be cryptic and lacking in discussion regarding the obviousness of the patent and the prior art. The appellant's submission about the synergistic effect of the treatment was also not considered by the Assistant Controller. The Court decided to remand the matter to a different Patent Controller for fresh consideration, ensuring a personal hearing for the appellant and a decision within three months. The appeal was allowed with these directions, and there was no order as to costs.

Case Citation: Universitat Ulm Vs Assistant Controller Of Patents/03.07.2024/CMA(PT) No.1 of 2024:Madras High Court:P.B.Balaji, H. J. 

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Advocate Ajay Amitabh SumanI

P Adjutor [Patent and Trademark Attorney]

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