Osaka University Vs. Assistant Controller of Patents and Designs

Osaka University appealed against the Assistant Controller's order dated 29.08.2020 refusing patent application No. 3495/DELNP/2012 for bridged artificial nucleosides and nucleotides featuring a five to seven-membered cyclic amide bridge, on grounds of lack of inventive step under Section 2(1)(j) and non-patentability under Section 3(d) of the Patents Act, 1970. The Controller primarily relied on prior art D2, miscompared nuclease resistance data by wrongly referencing Example 13 instead of Example 12, failed to explain how multiple prior arts rendered the invention obvious to a person skilled in the art, introduced new reasoning in the impugned order without prior notice, and raised Section 3(d) objections without identifying the specific known substance or prior art in the FER and hearing notice, denying the appellant opportunity to respond. The Delhi High Court found these procedural and substantive infirmities rendered the order unsustainable and remanded the matter for fresh consideration with a hearing within six months.

• While rejecting a patent for lack of inventive step under Section 2(1)(ja), the Controller must discuss three elements: invention in prior art, invention in the application, and how it would be obvious to a person skilled in the art; a bare conclusion without such analysis is impermissible (Paras 33-34, following Agriboard International LLC v. Deputy Controller of Patents and Designs, 2022 SCC OnLine Del 4786).
• New grounds or reasoning for objections under Sections 2(1)(j) or 3(d) cannot be introduced for the first time in the final refusal order without giving the applicant prior notice and opportunity to address them (Paras 55, 60).
• For an objection under Section 3(d), the Controller must specifically identify the "known substance" and explain how the claimed compounds are new forms or derivatives thereof; failure to do so in the FER or hearing notice violates principles of natural justice (Paras 56-62, following DS Biopharma Limited v. The Controller of Patents and Designs, 2022 SCC OnLine Del 3211).

Case Title: Osaka University Vs. Assistant Controller of Patents and Designs Order Date: December 24, 2025 Case Number: C.A.(COMM.IPD-PAT) 390/2022 Neutral Citation: Not available in document Name of Court: High Court of Delhi at New Delhi Name of Judge: Hon'ble Mr. Justice Tejas Karia

[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation] [Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi]