In a recent order passed by the Intellectual Property Appellate Board (‘IPAB’) in University of Copenhagen v. The Controller of Patents,[1] besides determining the patentability of the claimed invention, the IPAB also drew parallels between the international search report and the mandated search and examination reports from the Indian Patent Office (IPO), and the expectations from both the reports.

Facts and background

University of Copenhagen (‘Appellant’) filed a national phase application, claiming priority from PCT Application No. PCT/EP/2011/004565. The Appellant filed a patent application in India vide Application No. 531/DELNP/2013 for its invention titled, ‘GLUCOSINOLATE TRANSPORTER PROTEIN AND USES THEREOF’ on 17 January 2013.

The Controller of Patents (‘Respondent’) issued the first examination report (‘FER’) on 2 July 2018, wherein it raised several objections, namely, plurality of inventions, lack of inventive step, non-patentability under Section 3(j) of the Patents Act, 1970 (‘Act’), absence of clarity, conciseness, and definitiveness, and failure of compliance with certain formal requirements.

Summarised FER objections

In view of plurality of inventions, the Respondent deferred the examination of a group of inventions recited in claims 22-28. The FER was restricted to only one invention as recited in claims 1-21. Claims 19-20 were objected as being non-patentable under Section 3(j) of the Act as a plant or a part of the plant including seed from said plant is non-patentable under Section 3(j) of the Act. Further, it was mentioned that claim 19 being a product-by-process was not permissible under the Act.

The FER stated that claims 1-21 lacked any inventive step and was obvious in view of the cited prior art documents, D1 to D3. The FER further explained the lack of inventive step by stating that it would have been obvious to a person skilled in the art to have expressed an Arabidopsis and/or Brassica transporter cDNA library in Xenopus oocytes, such as the one taught by D2, and to have subsequently screened for glucosinolate uptake activity in order to identify glucosinolate transporters in Arabidopsis and/or Brassica. The claimed invention would have been facilitated by the known transporter sequences taught by D2 and D3. Thus, the Respondent observed that the claimed invention would have been obvious to a person skilled in the art at the time of filing the Application.

The Respondent observed that claims 1-28 lacked unity of invention as they did not relate to a single invention or a group of inventions that formed a single inventive concept, as per Section 10(5) of the Act. It stated that there were seven (7) groups of invention and no technical relation between them could be observed. Claims 14-16 and 21 lacked clarity; the term ‘GTR’ as used in the claims appeared to be arbitrary and did not have a widely accepted meaning in the art. Additionally, claim 13 did not sufficiently define the invention; it mentioned the decreased GSL content in plant seeds but did not specify the plant and its relation to the invention.

Impugned Order

The Appellant submitted its response to the FER on 2 January 2019, pursuant to which it received a hearing notice on 3 January 2020, wherein the Respondent objected to the amendments made in the claim by the Appellant on the grounds of lack of clarity and conciseness, non-patentability under Section 3(c) of the Act, lack of unity of invention as per Section 10(5) of the Act, and absence of definitiveness i.e., the patent application did not define the steps of the method.

Subsequent to the hearing which took place on 4 March 2020, the Appellant filed its written submissions on 17 April 2020, and the Respondent issued an order on 6 May 2020, whereby the Appellant’s patent application was refused (‘impugned order’). The Appellant thereafter preferred an appeal against the impugned order under Section 117A of the Act.

The operative portion of the impugned order stated that the mutant product claimed was not natural and that its structure should have been defined, which the Appellant had failed to do, and hence the amended claim 17 was not patentable as per Section 3(c) of the Act. The Respondent also stated that since the amended claim 17 was not patentable as per the Act, the other technical objections from the hearing notice were not elaborated further in the impugned order.

Analysis & decision

The Appellant submitted that the as-filed specification accompanying the patent application clearly elaborated the several mutations in Arabidopsis and Brassica GTR sequences, thereby, defining the structure of the mutants. The Appellant further demonstrated that the claimed mutant allele was prepared by the Appellant and did not occur in nature, and thus did not fall under the prohibition of Section 3(c) of the Act.

The Appellant also submitted that the technical features of the mutant product in claim 17 was sufficiently defined in terms of amino acid sequence of the mutant GTR protein, and the nucleic acid sequences encoding the mutant GTR protein. It elaborated that in plant breeding, where the target of the breeding was a coding sequence, it was customary to refer to the protein sequence, as the aim of the mutation was to alter the activity of the protein, and the DNA sequence would only act as a means to this effect.

If the object of the mutation was to generate a single amino acid substitution, there were several ways to do so due to the degeneracy of the genetic code. The Appellant further stated that it would be impractical to list every possible substitution in the specification. The Appellant also submitted that such type of claims reciting the mutant proteins had previously been granted in a number of occasions and in order to support the submission, the Appellant listed out the application numbers of a few of the granted patent applications.

Further, the Appellant criticised the Respondent’s erroneous order in that it was self-contradictory, passed without application of mind, and with a preconceived notion to refuse the application, as the Respondent stated that the claimed mutant was artificial but refused the patent application on the grounds of non-patentability under Section 3(c) of the Act.

On analysis of the facts and evidence presented, the IPAB noted that the Respondent had only examined the set of claims reciting only one group of invention i.e., claims 1-21, even though the patent application as-filed had 28 claims. Section 12 of the Act does not permit the Controller to choose a specific set of claims and only examine those. While Section 10(5) allows for an objection regarding lack of unity of invention, restricted examination of selected claims by the Controller is not permissible, particularly when the applicant has paid the applicable fees with respect to all the claims.

The IPAB further observed that the objections pertaining to the claims 1-21 raised by the Respondent in the FER was a verbatim copy of the international search report, which had reported a lack of unity of invention and searched only the first set of claims, namely, claims 1-21. While the International Searching Authority (ISA) is not mandated to perform a search for multiple sets of claims for a single search fee, however, that is not the case with the IPO, which collects a fee in respect of all claims.

The Act and corresponding Patents Rules, 2003, do not provide for the selection of claims to search and examine, as per the examiner’s convenience. While the ISA’s search report might have persuasive force, it cannot be adopted verbatim, and the Respondent by doing so, failed to add his own input and included conflicting statements as highlighted by the Appellant.

The IPAB found that claims 1-16 related to, ‘A METHOD FOR DECREASING GLUCOSINOLATE CONTENT IN SEED OR SEED MEAL” while claim 17 related to, ‘A MUTANT GTR ALLELE ENCODING A GTR PROTEIN COMPRISING AN AMINO ACID SEQUENCE.’ It agreed with the Appellant’s auxiliary request to remove claim 17, by which the Respondent’s objection would also be averted, and the scope of claims 1-16 would not be altered.

Accordingly, the IPAB directed the Appellant to delete claim 17 and to file the remaining claims at the earliest to the IPO. Further, the IPAB set aside the impugned order, and directed the Respondent to grant the patent in respect of the invention claimed by the Appellant as restricted in the claims 1-16, within two (2) weeks of the issuance of the order.

[1] OA/64/2020/PT/DEL, decided on Oct. 27, 2020.