Remanded Decisions
108 cases | Page 1 of 4
Merck Sharp & Dohme B.V v.The Union Of India
Merck Sharp & Dohme B.V challenged the issuance of an impugned notice based on the fourth pre-grant opposition, arguing that the delay in deciding previous oppositions was causing undue hardship and delaying the grant of patent for its compound acalabrutinib (Calquence). The court directed the Patent Office to decide all pending pre-grant oppositions within a stipulated time frame and ensure any new opposition raises fresh grounds.
Titan Company Limited v.The Controller of Patents & Designs
Titan Company Limited appealed the rejection of its patent application for 'A Jewellery Assembly' by the Controller of Patents & Designs. The Controller rejected the application, stating that the claims fell under Section 3(l) and were suitable for design registration rather than a patent. The High Court set aside the impugned order, finding that the respondent failed to consider the appellant's technical submissions.
M/S. Tvs Motor Company Limited v.The Assistant Controller of Patents & Designs, Patent Office
TVS Motor Company Limited appealed an order by the Assistant Controller of Patents rejecting its application for "Vehicle Frame Assembly" on grounds including lack of inventive step, exclusion under Section 3(f), and formal requirements. The appellant argued that the rejection failed to follow a proper five-step analysis when assessing obviousness against cited prior art. The High Court set aside the impugned order and remanded the application for reconsideration.
M/S. Tvs Motor Company Limited v.The Assistant Controller of Patents & Designs, Patent Office
TVS Motor Company appealed an order rejecting its patent application for a 'Vehicle Frame Assembly' due to lack of inventive step and other objections. The appellant argued that their design, which mounts a utility box on gusset plates instead of cross members, provides surprising technical effects like enhanced strength and optimized space utilization. The High Court set aside the rejection order and remanded the application for reconsideration.
M/s.Rallis India Limited v.Deputy Controller of Patents and Designs
Rallis India Limited appealed an order issued by the Deputy Controller of Patents challenging the rejection of its patent application for a stable herbicidal composition. The appellant argued that the prior art cited (IN 2243/MUM/2014, D1, and D2) did not adequately disclose or teach the claimed invention's specific formulation. The High Court found merit in these contentions.
Syngene International Limited v.The Assistant Controller of Patents and Designs & The Controller of Patents
Syngene appealed the rejection of its patent application for a method predicting organ toxicity. The Controller rejected the application, citing lack of novelty and inventive step, particularly regarding the requirement of novel hardware for CRIs. The High Court set aside the impugned order, finding that the contribution lies in software and directing reconsideration based on updated guidelines.
Natural Medicine Institute Of Zhejiang v.The Deputy Controller of Patents And The Controller of Patents
The petitioner appealed against an order rejecting its patent application (No. 6275/CHENP/2011) for 'A MORDANT AND HAIR COLORING PRODUCTS CONTAINING THE SAME'. The rejection was based on procedural grounds regarding claim amendments, but the court found that the impugned order lacked reasons and set it aside.
Ranjani Ramesh v.The Assistant Controller Of Patents And Designs
The appeal challenged an order rejecting Patent Application No. 202141032403, which related to a system for identifying micro-motions for early detection of neuro-degenerative diseases. The rejection was based on lack of inventive step and non-patentability grounds. The High Court set aside the impugned order because it did not follow a robust obviousness analysis and failed to record findings regarding all objections raised in the FER.
Tvs Motor Company Limited v.The Deputy Controller of Patents and Designs, The Patent Office
TVS Motor Company appealed the rejection of its Indian Patent Application No. 784/CHE/2012 for an 'Accelerator Safety Control Device'. The Controller rejected the application citing lack of inventive step based on prior art documents D1-D3, which were primarily related to four-wheeler vehicles. The High Court set aside the impugned order and remanded the matter for reconsideration.
Srinivas Jegannathan v.The Controller of Patents
The appellant challenged the Controller's order rejecting Patent Application No. 122/CHE/2006 for a novel antibiotic formulation (Ceftazidime, Tazobactum, and Linezolid). The appellant argued that the combination was not obvious from prior art. The High Court set aside the rejection order and remanded the matter for reconsideration based on the original claims.
Tvs Motor Company Limited v.The Assistant Controller of Patents and Designs
TVS Motor Company appealed the rejection of its patent application (No.798/CHE/2011) for an invention related to a bearing structure in an internal combustion engine. The rejection was based on lack of novelty and inventive step citing prior art D1 and D2. The High Court set aside the rejection order, emphasizing that a proper obviousness analysis must be conducted before rejecting the application.
Ramesh Chandra Sahoo v.West Bengal State Food Processing and Horticulture Development Corporation Limited
The appeal challenged an order that treated a Geographical Indication (GI) rectification application as abandoned due to procedural delays. The appellant argued that he had taken steps within the permissible time limits, including obtaining extensions under the GI Act. The High Court set aside the impugned order and remanded the matter for reconsideration.
M/S.Maya Appliances Pvt. Ltd. v.Deputy Controller of Patents and Designs
The appellant challenged the Deputy Controller's order revoking Patent No. 452008, which covered an Intelligent Cooking Stove System. The revocation was based on lack of inventive step. The High Court set aside the impugned order and remanded the matter for reconsideration.
Annikki Gmbh v.The Assistant Controller of Patents and Designs, The Patent Office
Annikki Gmbh appealed the rejection of its patent application concerning a process for producing xylitol from lignocellulosic material. The rejection was based on alleged lack of inventive step and exclusion under Section 3(d) due to prior art citations (D1-D5). The High Court found errors in the respondent's reasoning, particularly regarding the non-fermentative nature of the claimed process versus the cited prior art.
Robert Bosch Limited v.The Deputy Controller of Patents and Designs, Government of India
Robert Bosch Limited appealed the rejection of its patent application (No. 201944047460), which was initially rejected by the Deputy Controller of Patents on grounds including lack of novelty, lack of inventive step, and exclusion under Section 3(m) because it was a method claim. The High Court set aside the rejection based on the finding that the claimed process is an inventive process, not merely a theoretical or mental act, and remanded the matter for re-examination on non-Section 3(m) grounds.
Tekelec, Inc. v.The Controller of Patents
Tekelec appealed an order rejecting its patent application (No. 7133/CHENP/2009) on the grounds that the invention was a non-patentable 'business method' under Section 3(k). The High Court examined the claim and held that since the invention involves using software to improve system functionality for verification, it is not merely a business method. Consequently, the rejection order was set aside and the matter remanded for re-consideration.
Akebia Therapeutics, INC. v.The Controller of Patents and Designs, Government of India
Akebia Therapeutics appealed the Assistant Controller's order rejecting its patent application (No. 201647000423). The rejection was primarily based on the argument that amending the original method-of-treatment claim to a pharmaceutical composition claim violated Section 59(1) of the Patents Act, 1970. The High Court set aside this order and remanded the matter for re-consideration.
The Chinese University of Hong Kong v.The Assistant Controller of Patents and Designs
The Chinese University of Hong Kong appealed an order rejecting its patent application for a method related to detecting genetic aberrations associated with cancer. The appellant argued that the rejections under Sections 3(i), 3(k), and 10(4)(c) were flawed, citing lack of reasoning and procedural unfairness. The High Court set aside the impugned order and remanded the matter for fresh consideration.
University of Washington v.The Assistant Controller of Patents and Designs
The University of Washington appealed the Assistant Controller's order rejecting its patent application (No. 201747006075). The rejection was primarily based on Section 3(i), arguing that the method for detecting tumor-derived cell-free DNA falls under diagnostic processes and is therefore not patentable. The High Court set aside the impugned order, clarifying that Section 3(i) applies only to inventions that 'per se disclose pathology' to a person skilled in the art, and remanded the matter for reconsideration.
The Chinese University of Hong Kong v.The Assistant Controller of Patents and Designs
The Chinese University of Hong Kong appealed an order rejecting its patent application for a method to detect genetic aberrations associated with cancer. The appellant argued that the rejection was based on flawed reasoning regarding Sections 3(i), 3(k), and 10(4)(c) of the Patents Act, 1970. The Madras High Court set aside the impugned order and remanded the matter for re-consideration.
University of Washington v.The Assistant Controller of Patents and Designs
The University of Washington appealed a rejection order by the Assistant Controller of Patents and Designs regarding its patent application for methods using cell-free DNA to identify diseases. The original rejection was based on Section 3(i) of the Patents Act, arguing that the method found application in diagnostics. The High Court set aside this order, clarifying that Section 3(i) applies only if the invention 'per se disclose pathology' to a person skilled in the art.
Shaperon Inc. v.Assistant Controller of Patents and Designs, Government of India
Shaperon Inc. appealed the rejection of its patent application concerning compositions for treating allergic skin disorders containing GPCR19 agonists. The rejection was based on lack of novelty, inventive step, and non-patentability under Section 3(e). The High Court set aside the impugned order and remanded the matter for reconsideration.
Dr. Joy Vadakkan Thomas v.The Assistant Controller of Patents and Designs
Dr. Joy Vadakkan Thomas appealed an order rejecting Patent Application No. 201941042481 for a method to capture carbon dioxide. The rejection was based on lack of inventive step and non-patentability under Section 3(d). The High Court set aside the impugned order, noting that new grounds were raised by the respondent, and remanded the matter for reconsideration.
Magneti Marelli S.P.A. v.The Assistant Controller of Patents & Designs
Magneti Marelli appealed a decision by the Assistant Controller of Patents & Designs rejecting its patent application (No. 420/CHE/2009) on grounds of lack of inventive step based on prior art citations. The appellant argued that the rejection order failed to discuss their submissions distinguishing the invention from the cited prior arts. The High Court found that the respondent's order was unsupported by reasons and set it aside, remanding the matter for reconsideration.
Tahoe Research Ltd. v.The Controller of Patents
Tahoe Research Ltd appealed the rejection of its patent application (No. 201647014734) by The Controller of Patents. The appellant argued that principles of natural justice were violated regarding lack of clarity objections, and that the novelty analysis incorrectly applied EPO reasoning without considering material differences in the claims.
The Trustees Of Columbia University v.The Assistant Controller of Patents and Designs
The appellant challenged an order rejecting its amended patent claims (1-19) for 'METHODS AND COMPOSITIONS FOR TREATMENT OF AMYLOID DEPOSITION DISEASES' under Section 59 of the Patents Act. The appellant argued that the amendments were supported by the complete specification, citing relevant case law. The High Court set aside the impugned order and remanded the matter for fresh reconsideration.
Shimadzu Corporation v.The Assistant Controller of Patents and Designs, The Patent Office
Shimadzu Corporation appealed an order rejecting its patent application (No. 201647043103), which concerned a surrogate biomarker for evaluating amyloid beta peptide accumulation. The rejection was based on Section 3(i) of the Patents Act, 1970, as it related to diagnostic methods. The High Court set aside the order and remanded the matter, finding that the appellants were prejudiced by not having access to a key judgment before the initial hearing.
Jupeng Bio (Hk) Limited v.The Controller of Patents and Designs, Government of India
Jupeng Bio appealed an order rejecting its patent application for 'Control of Conductivity in Anaerobic Fermentation'. The appellant challenged the rejection, arguing that the prior art cited did not explicitly disclose all claimed elements (conductivity and SCU relationship), and that the reasons for rejection under Section 3(d) were unreasoned. The High Court found deficiencies in the respondent's reasoning regarding both novelty and Section 3(d) non-patentability.
Amazon Technologies Inc. v.The Controller of Patents & Designs
Amazon Technologies Inc. appealed a decision by the Assistant Controller of Patents & Designs refusing to grant a patent for its invention (Application No. 5937/CHENP/2010). The appeal challenged the refusal on the ground that it lacked inventive step, arguing that the refusal order was non-speaking as it failed to provide reasons for how the cited prior art documents applied to the claimed invention.
Gilead Sciences Inc. v.Union of India
Gilead Sciences Inc. challenged a hearing notice and subsequent opposition board recommendation related to Indian Patent No.319927, arguing that the process violated The Patents Act, 1970 by not allowing them to present evidence. The Court quashed the impugned notices and recommendations.
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