In the case of M/S. Cornell Research Foundation, Inc. v Assistant Controller of Patents and Designs [(T) CMA (PT) No. 187 of 2, judgment dated 5^th July 2024], the Madras High Court allowed the Appellant’s prayer for remand of their patent application (number 4167/CHENP/2010) back to the Patent Office for fresh consideration.

The subject application was refused by the Controller and the claim amendments filed by the Appellant were disallowed under Section 59 of the Patents Act, 1970, for being outside the scope of the original claims. Notably, the expert affidavits filed by the Appellant to support their case were not taken on record. As per the impugned order, the expert affidavits were submitted in support of the amended claims, and since the amended claims were not allowable under section 59, it was decided to not take the affidavits on record.

In their appeal, the Appellant pointed to several infirmities in the order including:

• The exclusion of the expert affidavits from the record.
• The lack of discussion on the Appellant’s detailed response to the objections raised in the hearing notice.
• The lack of appreciation of the grant of patents in the corresponding US and EP cases, after considering the same prior art which were cited by the Controller for refusing the subject application.

The Court concurred with the Appellant’s submissions and without going into the merits of the appeal, remitted the matter to the Patent Office for fresh consideration. The Court specifically directed the Controller to consider the fact that the application had been granted patents in US and EP for the subject claims, after considering the same prior art references. The Court also directed the Controller to consider the expert affidavits filed along with the written submissions of the Appellant. 

This decision underscores the importance of procedural fairness and thorough consideration of evidence as well as grant of corresponding patents in other jurisdictions, in patent prosecution.