Case Title:Jupeng Bio (HK) Limited v. The Controller of Patents and Designs
Date of Order:4th February 2025
Case Number:CMA(PT)/9/2023
Court:igh Court of Judicature at Madras
Presiding Judge:Hon’ble Mr. Justice Senthilkumar Ramamoorthy
Brief Facts of the Case:Jupeng Bio (HK) Limited filed Civil Miscellaneous Appeal (Patents) under Section 117A of the Patents Act, 1970, challenging the order dated 6th February 2023, which rejected its patent application (No. 201647000108) for an invention titled "Control of Conductivity in Anaerobic Fermentation".
The Controller of Patents rejected the application citing:
1. Lack of novelty based on prior art documents (D1–D7).
2. Non-patentability under Section 3(d) of the Patents Act.
3. Lack of clarity and conciseness in the claims.
The appellant contested the findings, arguing that the Patent Office failed to provide adequate reasoning for its conclusions.
Key Issues for Determination:
1. Did the claimed invention lack novelty due to disclosure in prior art document D7?
2. Was the rejection under Section 3(d) justified in the absence of specific reasoning?
3. Did the Controller of Patents overlook the appellant’s contention regarding ethanol yield on the first day of the process?
4. Was the rejection order legally sustainable without clear, reasoned findings?
Judicial Reasoning and Analysis:
1. Novelty and Disclosure in D7:The Controller of Patents concluded that Example 1B of prior art document D7 inherently disclosed the parameters of conductivity and the relationship between Specific Carbon Uptake (SCU) and conductivity. However, the Court observed that conductivity was not explicitly mentioned in the tables cited from D7. The inference of inherent disclosure required clear reasoning, which was absent.
Court’s Finding: The rejection on grounds of lack of novelty was unsustainable without adequate justification.
2. Non-Patentability under Section 3(d):The Patent Office cited Section 3(d) of the Patents Act, 1970, which excludes mere discoveries of new properties or uses of known substances from patentability unless they result in enhanced efficacy. However, the impugned order provided no clarity regarding which limb of Section 3(d) was applicable or why the claimed invention was considered "well-known."
Court’s Finding: The conclusion was unreasoned and therefore unsustainable.
3. Inventive Step and Ethanol Yield:The appellant asserted that the claimed process consistently yielded at least 10 grams of ethanol per liter per day from the first day of fermentation, distinguishing it from prior art. The Patent Office, however, focused solely on the yield observed on the second day in D7 and did not address the appellant's first-day yield argument.
Court’s Finding: The omission of this key contention reflected an incomplete evaluation of the inventive step.
Decision of the Court:The Madras High Court set aside the impugned order and remanded the matter for reconsideration with the following directions: Fresh Consideration: The patent application was to be re-evaluated afresh.
