Court Pulls Up ‘Cryptic Decision’, Remands Patent Application

Pulling up the “cryptic decision” rejecting the appellant’s patent application, the Madras High Court recently remanded the matter back to the respondent, the Assistant Controller of Patents and Designs.[1]

The appellant, Germany-based Universitat Ulm, approached the Madras High Court upon being aggrieved by the rejection of its patent application claiming a patent for the use of Opioids or Opioid Mimetics for the treatment of resistant cancer patients. It was argued that the grant of a US patent was after considering the prior art, and the respondent disregarded the same. Further, it was submitted that the synergistic effect of the claimed composition referred to in the appellant’s submissions was also not considered; this was to aver that the bar under Section 3(e) of the Patents Act, 1970, did not apply.

On the other hand, the respondent claimed that the patent was obvious to a person skilled in the art and thus did not satisfy the essential condition to be patentable.

The Court observed that there was no discussion of how the patent application was obvious to a person skilled in the art, the prior arts, the grant of a US patent, or the synergistic effect in arriving at the impugned decision. In light of this, the impugned order was termed a “cryptic decision.”

With this, it was considered prudent to remand the matter back to the respondent, with directions to ensure that a different Patent Controller scrutinise the application. It was added that the application had to be decided within three months.

[1] Universitat Ulm v. Assistant Controller of Patents and Designs [(T)CMA(PT) No.1 of 2024]