Michigan State University Vs. The Assistant Controller Case Study
4. Michigan State University vs The Assistant Controller
[Intellectual Property Appellate Board]
Facts:
The original patent titled ‘transgenic plants producing polyhydroxyalkanoates’ with a patent application no. being 661/Del/92. The patent was granted and provided with the no.178865. Later on, the Patents office objected due to plurality of distinct inventions and a divisional application was filed u/s 16 of the patents act in 1996 [1699/Del/96]. Another divisional application was filed in 1996, which was accepted in 2000 [1986/Del/96]. Both the divisional applications relates to plants having modified genes and the plant promoter DNA sequence in 1st divisional application had been obtained through recombinant techniques. The main objection …show more content…
of the PO was that the subject matter is not an invention and that it falls under s. 3(b) and 3(i). The appellant resubmitted stating that it is an invention as it is a process for the creation of a new and useful chemical. The main component of the appellants application was that that the chemicals were produced ‘in-vitro’ which means that it is not alive. The appellants further observed that the linking [of the DNA] is a normal chemical reaction. Hence the appellants observed that neither the present invention falls under the non-patentable invention nor it is a treatment of plants. The PO maintained the objection in its subsequent report on 13/9/2001. The appellants resubmitted documents on 30/10/2001 stating that the DNA in question could not replicate itself in a living organism. It needed a point of origin. The subsequent examination issued by 02/11/2001 stating that the claims do not constitute an invention under S. 2(1)(j) as they were living organisms, after which the appellants requested for amendments on 05/11/2001. On 09/11/2001 the appellants resubmitted the documents stating the absence of any living genome and replicable properties. On 09/01/2002 the PO re-stated that it is not liable to be given a patent. The appellant filed a review u/s 77 of the Patents Act, and referred to Dimminaco A.G. v. Controller of Patents Designs and Ors. wherein it was held that the word ‘manufacture’ has not been defined in the Act. In such situation since the word 'manufacture' has not been defined, the dictionary meaning of this word or the meaning attributed to in the particular trade or business must be accepted, if the end product is a commercial entity. It was also admitted that there is no statutory bar to accept a manner of manufacture as patentable even if an end product contains a living organism.
Conclusion:
In the instant case, the Court follows the reasoning that in order for the Controller of Patents to dispose off any application for patent, proper and just reasons will have to be provided.
The Court also held that any order provided without a citing a proper reason may be violate of natural justice.
5. Zentaris IVF GMBH
[Decision of the Controller]
Facts:
The claim was for the treatment of fertility disorders and had consisted of 6 claims. It was challenged on grounds of lack of any inventive step and s. 3(i) of the Act.
Conclusion:
The Controller based his decision on the description as it was originally filed by the applicant. The description was read into as an invention to improve the treatment, which cannot be granted a patent as per s. 3(i) of the Act. therefore the patent was not granted.
6. M/s Microsoft Corporation
[Decision of the Controller]
Facts:
An application for Patent for an invention titled " SYSTEMS AND METHODS FOR THE IMPLEMENTATION OF A DIGITAL IMAGES SCHEMA FOR ORGANIZING UNITS OF INFORMATION MANAGEABLE BY A HARDWARE/SOFTWARE INTERFACE SYSTEM” was filed by M / s. MICROSOFT CORPORATION and the same was allotted Application Number. 1840/DELNP/2005 dated …show more content…
04/05/2005.
The request for examination was filed by the agent on 27/07/2006 and the same was examined under the provision of section 12 of the Patents Act, 1970.The First Examination Report was issued to the agent on 21/01/2010 which inter-alia included objections lack of novelty, inventive step and under section 10(4). The agents submitted their reply to Examination Report with amended claims.
After going through the amendments and reply, the examiner and controller felt that the requirement of the Patent Act is not met; hence hearing notice had been issued fixing the date for hearing as 03/08/2011. Applicant had attended the hearing and written submission had been submitted.
Conclusion:
The Controller decided that the ‘invention’ was not patentable as they do not fall within the scope of s. 3(k) and s. 2(1)(j) of the Act. The invention was an algorithm and thus it attracts the provisions of 3(k). Also, the claims which were dependent on it, according to the Controller, did not have any new oe inventive features and thus falls under s. 2(1)(j).
7. Application No.: 3801/delnp/2006
[Decision of the Controller]
Facts:
An application for Patent had a single technical objection w.r.t. section 3(k) of the Act. The patent was filed by Thomson Licensing related to a software patent, which had been rejected.
.
Conclusion:
The Controller decided on the basis of the response of the agents of the Applicant that the patent is indeed valid.
The agents had mentioned that the invention was not purely software and the invention involved a piece of hardware component. This, according to the Controller put the invention beyond the scope of s. 3(k). Hence, the patent was awarded.
8. Dr. Degapudi Janardhana Reddy & Mr. Lakshmanan Narayanan
[Decision of the Controller]
Facts:
The applicants filed an application for patenting a “back to back replica facility for note book lap top computer” and requested for hearing.
.
Conclusion:
The Controller decided that the invention would not constitute an invention under s. 2(1)(j) of the Act as there is not inventive step which is involved. Thus, in order for any patent to exist, there must be an inventive step involved.
9. Kemesa Inc.
[Decision of the Controller]
Facts:
The applicants filed an application for patenting a “method for protecting against theft and a system thereof”. The FER (First Examination Report) had several objections. The FER stated that a mere inclusion of well-known methods is not to be considered as involving any new technical process, and is thus not patentable u/s 3(k) of the Act.
.
Conclusion:
The Controller decided that the patent cannot be granted as the invention is a method of carrying out business and is thus non patentable. Also, since the applicant uses software and an algorithm, without any hardware to support such, it would fall within the ambit of sec. 3(k) and has been held as non patentable.
[Intellectual Property Appellate Board]
Facts:
The original patent titled ‘transgenic plants producing polyhydroxyalkanoates’ with a patent application no. being 661/Del/92. The patent was granted and provided with the no.178865. Later on, the Patents office objected due to plurality of distinct inventions and a divisional application was filed u/s 16 of the patents act in 1996 [1699/Del/96]. Another divisional application was filed in 1996, which was accepted in 2000 [1986/Del/96]. Both the divisional applications relates to plants having modified genes and the plant promoter DNA sequence in 1st divisional application had been obtained through recombinant techniques. The main objection …show more content…
of the PO was that the subject matter is not an invention and that it falls under s. 3(b) and 3(i). The appellant resubmitted stating that it is an invention as it is a process for the creation of a new and useful chemical. The main component of the appellants application was that that the chemicals were produced ‘in-vitro’ which means that it is not alive. The appellants further observed that the linking [of the DNA] is a normal chemical reaction. Hence the appellants observed that neither the present invention falls under the non-patentable invention nor it is a treatment of plants. The PO maintained the objection in its subsequent report on 13/9/2001. The appellants resubmitted documents on 30/10/2001 stating that the DNA in question could not replicate itself in a living organism. It needed a point of origin. The subsequent examination issued by 02/11/2001 stating that the claims do not constitute an invention under S. 2(1)(j) as they were living organisms, after which the appellants requested for amendments on 05/11/2001. On 09/11/2001 the appellants resubmitted the documents stating the absence of any living genome and replicable properties. On 09/01/2002 the PO re-stated that it is not liable to be given a patent. The appellant filed a review u/s 77 of the Patents Act, and referred to Dimminaco A.G. v. Controller of Patents Designs and Ors. wherein it was held that the word ‘manufacture’ has not been defined in the Act. In such situation since the word 'manufacture' has not been defined, the dictionary meaning of this word or the meaning attributed to in the particular trade or business must be accepted, if the end product is a commercial entity. It was also admitted that there is no statutory bar to accept a manner of manufacture as patentable even if an end product contains a living organism.
Conclusion:
In the instant case, the Court follows the reasoning that in order for the Controller of Patents to dispose off any application for patent, proper and just reasons will have to be provided.
The Court also held that any order provided without a citing a proper reason may be violate of natural justice.
5. Zentaris IVF GMBH
[Decision of the Controller]
Facts:
The claim was for the treatment of fertility disorders and had consisted of 6 claims. It was challenged on grounds of lack of any inventive step and s. 3(i) of the Act.
Conclusion:
The Controller based his decision on the description as it was originally filed by the applicant. The description was read into as an invention to improve the treatment, which cannot be granted a patent as per s. 3(i) of the Act. therefore the patent was not granted.
6. M/s Microsoft Corporation
[Decision of the Controller]
Facts:
An application for Patent for an invention titled " SYSTEMS AND METHODS FOR THE IMPLEMENTATION OF A DIGITAL IMAGES SCHEMA FOR ORGANIZING UNITS OF INFORMATION MANAGEABLE BY A HARDWARE/SOFTWARE INTERFACE SYSTEM” was filed by M / s. MICROSOFT CORPORATION and the same was allotted Application Number. 1840/DELNP/2005 dated …show more content…
04/05/2005.
The request for examination was filed by the agent on 27/07/2006 and the same was examined under the provision of section 12 of the Patents Act, 1970.The First Examination Report was issued to the agent on 21/01/2010 which inter-alia included objections lack of novelty, inventive step and under section 10(4). The agents submitted their reply to Examination Report with amended claims.
After going through the amendments and reply, the examiner and controller felt that the requirement of the Patent Act is not met; hence hearing notice had been issued fixing the date for hearing as 03/08/2011. Applicant had attended the hearing and written submission had been submitted.
Conclusion:
The Controller decided that the ‘invention’ was not patentable as they do not fall within the scope of s. 3(k) and s. 2(1)(j) of the Act. The invention was an algorithm and thus it attracts the provisions of 3(k). Also, the claims which were dependent on it, according to the Controller, did not have any new oe inventive features and thus falls under s. 2(1)(j).
7. Application No.: 3801/delnp/2006
[Decision of the Controller]
Facts:
An application for Patent had a single technical objection w.r.t. section 3(k) of the Act. The patent was filed by Thomson Licensing related to a software patent, which had been rejected.
.
Conclusion:
The Controller decided on the basis of the response of the agents of the Applicant that the patent is indeed valid.
The agents had mentioned that the invention was not purely software and the invention involved a piece of hardware component. This, according to the Controller put the invention beyond the scope of s. 3(k). Hence, the patent was awarded.
8. Dr. Degapudi Janardhana Reddy & Mr. Lakshmanan Narayanan
[Decision of the Controller]
Facts:
The applicants filed an application for patenting a “back to back replica facility for note book lap top computer” and requested for hearing.
.
Conclusion:
The Controller decided that the invention would not constitute an invention under s. 2(1)(j) of the Act as there is not inventive step which is involved. Thus, in order for any patent to exist, there must be an inventive step involved.
9. Kemesa Inc.
[Decision of the Controller]
Facts:
The applicants filed an application for patenting a “method for protecting against theft and a system thereof”. The FER (First Examination Report) had several objections. The FER stated that a mere inclusion of well-known methods is not to be considered as involving any new technical process, and is thus not patentable u/s 3(k) of the Act.
.
Conclusion:
The Controller decided that the patent cannot be granted as the invention is a method of carrying out business and is thus non patentable. Also, since the applicant uses software and an algorithm, without any hardware to support such, it would fall within the ambit of sec. 3(k) and has been held as non patentable.