Introduction: This case revolves around the refusal by the Controller of Patents to grant a patent to Lummus Novolen Technology GmbH for a claimed invention involving an improved Ziegler-Natta catalyst system. The appeal under Section 117A of the Patents Act, 1970, challenged the rejection on the ground that the invention lacked an "inventive step" under Section 2(1)(ja) of the Act. The High Court of Delhi adjudicated whether the appellant’s invention involved sufficient technical advance and non-obviousness to merit patent protection.
Factual Background: Lummus Novolen Technology GmbH is a German entity specializing in polymer process technologies. On May 19, 2015, the appellant filed Patent Application No. 4278/DELNP/2015 titled “High Performance Ziegler-Natta Catalyst Systems, Process for Producing Such MgCl₂-Based Catalysts and Use Thereof.” The claimed invention sought to provide a Ziegler-Natta catalyst using diether compounds as internal electron donors in order to produce phthalate-free polypropylene polymers with better polymerization activity and reduced environmental risks.
Procedural Background: The Patent Office issued the First Examination Report (FER) in February 2019, citing prior art documents D1 (EP 1840138 A1), D2 (EP 1609805 A1), and D3 (WO 2009152268 A1), challenging novelty and inventive step. The appellant responded with amended claims and arguments, and a hearing was held. Despite submissions, the Assistant Controller rejected the application on January 30, 2023, for lack of inventive step under Section 2(1)(ja). The appellant then filed the present appeal before the High Court of Delhi.
Legal Issue: The legal issue before the Court was whether the claimed invention in the patent application demonstrated an “inventive step” as defined under Section 2(1)(ja) of the Patents Act, 1970, and was thus patentable?
Discussion on Judgments:The appellant relied on several precedents to argue procedural impropriety and lack of reasoned decision-making by the Controller:
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Wisig Networks Pvt. Ltd. v. Controller General of Patents, 2020 SCC OnLine IPAB 198 – to argue for a reasoned order under principles of natural justice.
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Kranti Associates Pvt. Ltd. v. Masood Ahmed Khan, (2010) 9 SCC 496 – reinforcing the need for speaking orders.
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Dolby International AB v. Assistant Controller of Patents, 2023:DHC:1854 – emphasizing that patent applications must be considered on their own merit and not merely follow foreign outcomes.
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Stempeutics Research Pvt. Ltd. v. Assistant Controller of Patents, 2020 SCC OnLine IPAB 16 – recognizing the grant of patents in foreign jurisdictions as evidence of inventive merit.
The respondent relied heavily on the approach of combining teachings from prior arts and invoked judicial tests to justify the rejection. The following judgments were discussed:
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F. Hoffmann-La Roche Ltd. v. Cipla Ltd., 2015:DHC:9674-DB – emphasized that a skilled person must find a teaching or suggestion in prior art to combine elements.
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Bristol-Myers Squibb Holdings Ireland v. BDR Pharmaceuticals, 2020 SCC OnLine Del 1700 – reasserting the “obvious to try” test and the need for technical advancement.
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Agriboard International LLC v. Deputy Controller of Patents, 2022 SCC OnLine Del 940 – held that the refusal of patent must consider the three-part test: prior art, invention, and obviousness to a skilled person.
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Novozymes v. Assistant Controller of Patents, 2024:MHC:1344 – differentiated inventions solving distinct technical problems from prior art.
Reasoning and Analysis of the Judge
The court applied the tests of “Could-Would Approach”, “Obvious to Try”, and “Problem-Solution” to assess whether the appellant’s invention was a non-obvious technical advance over the cited prior art. The Court observed that all three cited documents D1, D2, and D3 described processes and compositions similar to the claimed invention. Example 13 of D1 already disclosed a catalyst with a molecular weight distribution (MWD) of 7—well within the claimed range of 5.75 to 9. D2 similarly described MWD values of 7 and 7.1 using diether compounds. D3 disclosed the same process steps as the appellant’s claims but described electron donors in broader terms.
The Court found that a person skilled in the art would logically be motivated to combine the teachings of D1, D2, and D3 to arrive at the claimed invention. Since one of the inventors in the application was also the inventor of D3, the Court held that he would have knowledge of prior arts and that the modification did not rise to the level of a patentable inventive step. The Court rejected the argument that the Controller copied from the European Patent Office’s decision, finding that the order met the standards set in Agriboard International and was reasoned.
Further, the Court noted the appellant had filed two nearly identical patent applications on the same day—4277/DELNP/2015 (granted) and 4278/DELNP/2015 (the subject case)—and failed to demonstrate any substantial distinction between the two. This raised the concern of evergreening, where a patentee attempts to secure extended monopoly by filing overlapping applications.
Final Decision:The High Court dismissed the appeal and upheld the Controller’s decision rejecting the patent. It held that the claimed invention lacked an inventive step as per Section 2(1)(ja) of the Patents Act, 1970, being obvious to a person skilled in the art in view of the combined disclosures of prior art documents D1, D2, and D3.
Law Settled in This Case:The judgment reaffirms that a patent application must clearly demonstrate a non-obvious technical advance over existing prior art to qualify for protection. The burden is on the applicant to show inventive step, particularly when prior art documents already describe similar processes or products. The Court clarified that mere modification or optimization of known parameters without surprising technical effect is not patentable. This case also endorses the application of the “Could-Would” approach in assessing inventive step and discourages attempts at evergreening through serial applications with negligible variation.
Case Title: Lummus Novolen Technology GmbH Vs. The Assistant Controller of Patents and Designs:Date of Order: May 29, 2025:Case Number: C.A.(COMM.IPD-PAT) 12/2023:Neutral Citation: 2025:DHC:4614:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee
