In the case of Nippon Steel Corporation vs The Controller General of Patents, Designs & Trademarks & Anr. [C.A.(COMM.IPD-PAT) 323/2022, 2024:DHC:6514, judgement dated August 29, 2024], the Delhi High Court allowed the Appellant’s prayer to set aside the order that refused grant of their patent application number 8620/DELNP/2012 entitled “Method for Repairing Inside of Gas Flue or Coke Oven and Device for repairing inside of Gas Flue”.

The claimed invention covered a method (as described in Claim 1) and a device (as described in Claim 2 and 3) to facilitate the repair of damaged portions, such as cracks and fractures, inside a gas flue of a coke oven. The subject application was refused by the Controller for being patent ineligible under Section 3(d) of the Patents Act, 1970.
Section 3(d) excludes from patentability “the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant”.

It was the case of the Appellant that the objections raised by the Controller in the hearing notice pertained to Section 2(1)(j) and ‘Section 3’ of the Patents Act. No objection in relation to Section 3(d) of the Act was communicated explicitly to the Appellant neither in the first examination report nor in the hearing notice. This, they argued, constituted a breach of the principles of natural justice.

The Appellant further contended that the impugned order was cryptic and lacked proper basis for invoking Section 3(d). They argued that the order misinterpreted the technical aspects of their claims, erroneously holding that the method of repair, if used in conjunction with a device, would simply be part of the device’s manual and would thus fall under Section 3(d) of the Act. The Appellant emphasized that Claim 1 of their application detailed five technical steps for implementing the claimed method of repairing the gas flue, and therefore, should not be considered as merely an application or use of the device claimed in Claim 2.

The Court in its analysis noted that the impugned order only addressed the subject matter covered by Claim 1 of the application and held that said method claim was a mere use of a “known substance/ device”. The Court remarked that neither any prior art document had been cited in the hearing notice or impugned order to indicate that the device for implementing the method of Claim 1 was known, nor any objection in relation to novelty or inventive step had been raised, making it unclear as to what was the “known substance/ device” in view of which section 3(d) had been invoked.

The Court concluded that since there was no adverse observation on novelty and inventive step of the device claims, the Controller erred in holding the method of claim 1 as being a mere use of a known device.

The Court concurred with the Appellant’s submissions that the impugned order was in violation of the principles of natural justice and of the judgement of a co-ordinate Bench of the Delhi High Court in D.S. Biopharma Limited vs. The Controller of Patents and Designs and Anr. (C.A. (COMM.IPD-PAT) 6/2021) wherein it was held that in the absence of proper identification of the “known substance” in the hearing notice and a lack of proper opportunity to the respond to the objection under Section 3(d), the impugned order is unsustainable.

The Court ultimately set aside the impugned order for: lacking technical analysis of the claimed method, not applying any test or standard for patent eligibility of the subject matter, and for not identifying the known substance or device due to which Section 3(d) of the Act was alleged to be attracted. The matter was thus remanded to the Patent Office for fresh consideration.