In the case of Shaperon Inc vs Assistant Controller of Patents and Designs [(T)CMA(PT) No.46 of 2023], the Madras High Court highlighted that the grant of corresponding patents in other countries is a relevant factor that should be taken into consideration when assessing a patent application in India.

In the instant case, the Appellant’s patent application number 1667/CHENP/2015, relating to a pharmaceutical composition for the treatment of allergic skin diseases, was refused by the Controller on the ground of lack of inventive step in view of cited prior art documents. 

The Appellant challenged the impugned order asserting that:

• The Controller failed to consider the grant of Appellant’s corresponding patent applications in other jurisdictions. In particular, the Appellant pointed out that the European Patent Office (EPO) had granted the corresponding patent after examining the same prior art documents relied upon by the Indian Patent Office (IPO).
• The Controller overlooked the Appellant’s submissions distinguishing the claims in the subject application from the disclosures contained in the cited prior art.
• The Controller disregarded the inventor’s affidavit submitted to establish the advantages or unexpected effects of the claimed invention in comparison to the cited prior art. 

Upon analyzing the Appellant’s response to the First Examination Report, the Court found that the Controller had failed to engage with or record any findings on the Appellant’s contentions in the impugned order. The Court further observed that the inventor’s affidavit had not been considered, and its relevance was entirely disregarded.

The Court also held that while the grant of patents in foreign jurisdictions is not binding on the IPO, the fact that the same prior art documents had been examined by the EPO, the grant in Europe and the other jurisdictions should have been taken into consideration. The Court opined that the international grants should have been taken into account as one of the factors in the decision-making process.

In view of the foregoing, the Court remanded the matter to the Patent Office for reconsideration.