Lack of inventive step and insufficiency in disclosure are anti thesis to each other. A Patent can not be revoked simultaneously on both grounds
Introduction:
The case of BASF SE Vs. Joint Controller of Patents revolves around the patentability of an invention filed by BASF SE. The dispute concerns the rejection of a patent application by the Indian Patent Office and the legal questions surrounding the inventive step, novelty, and sufficiency of disclosure.
Detailed Factual Background:
BASF SE, a multinational chemical company, filed a patent application seeking protection for a particular chemical formulation. The application was examined by the Patent Office, and objections were raised under various provisions of the Patents Act, 1970. The objections primarily pertained to lack of inventive step and sufficiency of disclosure.
Upon responding to the objections, the applicant faced further rejections from the Patent Office, leading to an appeal before the Intellectual Property Division (IPD) of the High Court. The core contention was whether the invention met the statutory requirements for patentability under Indian law.
Detailed Procedural Background:
The patent application was initially examined by the Controller of Patents, who issued an examination report citing prior art references that allegedly anticipated the invention. The applicant responded to these objections, arguing that the cited prior art did not disclose or suggest the claimed invention in an obvious manner.
Despite the applicant’s submissions, the Controller of Patents rejected the application on the grounds of lack of inventive step and insufficient disclosure. BASF SE then filed an appeal before the IPD, challenging the rejection and arguing that the decision failed to properly appreciate the technical advancement offered by the invention.
Issues Involved in the Case:
Whether the invention claimed by BASF SE involved an inventive step under Section 2(1)(ja) of the Patents Act, 1970. Whether the prior art cited by the Controller of Patents disclosed or suggested the claimed invention. Whether the sufficiency of disclosure requirement under Section 10 of the Patents Act was met by the patent application. Whether the rejection by the Controller was justified based on the evidence and arguments presented.
Detailed Submission of Parties Submission by BASF SE:
The appellant argued that the invention demonstrated a significant improvement over prior art and was not obvious to a person skilled in the field. The prior art references cited by the Patent Office did not render the invention obvious, as they failed to teach the unique combination of components claimed in the application. The sufficiency of disclosure requirement was fulfilled, as the specification provided adequate details for a skilled person to work the invention without undue experimentation. The rejection of the application was based on an incorrect assessment of inventive step and an improper interpretation of prior art references.
Submission by the Joint Controller of Patents:
The respondent maintained that the invention lacked an inventive step as it was an obvious modification of known prior art. The disclosure was insufficient, as it did not enable a person skilled in the art to practice the invention without undue effort. The Controller exercised proper discretion in rejecting the application based on statutory provisions and relevant case laws.
Detailed Discussion on Judgments and Their Citations:
The parties cited multiple precedents in support of their arguments, including Novartis AG v. Union of India (2013) 6 SCC 1 – Cited by the respondent to argue that mere improvements in known substances do not qualify as inventive. Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979) 2 SCC 511 – Referred by the appellant to argue that an inventive step must be assessed in light of the technical advancement over prior art. Enercon (India) Ltd. v. Alloys Wobben (2014) 5 SCC 590 – Discussed in relation to sufficiency of disclosure and the need for clear and complete specifications.
The Court analyzed these judgments in the context of the case, emphasizing the need for a proper assessment of inventive step and sufficiency of disclosure as per statutory requirements.
Detailed Reasoning and Analysis of the Judge:
The Court examined whether the prior art references, when considered as a whole, would render the claimed invention obvious to a skilled person. It concluded that the claimed invention provided a technical advancement that was not obvious from the cited prior art. The Controller’s decision did not adequately address the technical contribution of the invention. The sufficiency of disclosure was met, as the description in the patent application was found to be enabling for a skilled person. Lack of inventive step and insufficiency in disclosure are anti thesis to each other. A Patent can not be revoked simultaneously on both grounds.The rejection was based on an erroneous interpretation of inventive step and lacked a detailed consideration of the applicant’s submissions.
Final Decision:
The Court set aside the rejection order of the Controller of Patents and directed the Patent Office to grant the patent, subject to compliance with formal requirements.
Law Settled in This Case:
The case reaffirmed the principles governing the assessment of inventive step and sufficiency of disclosure under the Patents Act, 1970. It clarified that an invention should be assessed for its technical contribution and advancement over prior art. A proper analysis of inventive step must consider whether a skilled person would arrive at the claimed invention without inventive ingenuity. The sufficiency of disclosure must be evaluated in light of whether a skilled person can practice the invention based on the description provided.Lack of inventive step and insufficiency in disclosure are anti thesis to each other. A Patent can not be revoked simultaneously on both grounds.
Case Title: BASF SE Vs. Joint Controller of Patents and Designs & Ors.
Date of Order: March 7, 2025
Case Number: IPDPTA/5/2024
Name of Court: Calcutta High Court
Hon’ble Judge: Hon'ble Justice Shri Ravi Krishan Kapur
