In the case of Topotarget UK Limited vs The Controller General of Patents and Ors. [IPDPTA/50/2023], the Calcutta High Court underscored the need for procedural fairness and reasoned adjudication in patent prosecution. Setting aside the impugned refusal, the Court made the following observations:

• The Examiner’s role is limited to examining the patent application and submitting a report to the Controller. The Examiner has no authority to participate in or make submissions during hearings. The Controller, as the adjudicating authority, is required to independently apply his mind to the objections and the applicant’s submissions and cannot mechanically endorse the Examiner’s opinion.
• The Controller cannot make out a new case in the heading notice by relying on prior art documents that were never cited in the First Examination Report (FER).
• While assessing inventive step under Section 2(1)(ja), mere citation of prior art in the impugned order is insufficient. The Controller must clearly demonstrate how the cited prior art renders the claimed invention obvious and why it would be more effective or technically advanced than the claimed invention.
• Prior art must disclose the invention in its entirety and in an enabling manner. Fragmented or incomplete disclosures cannot be relied upon to negate inventiveness.
• The assessment of obviousness must be free from hindsight bias. Reconstruction of the invention using the patent application itself as a guide through the prior art is impermissible.
• Mosaicing of multiple prior art references is permissible only where the prior arts themselves provide a clear technical lead or motivation to combine their teachings. There must be a coherent technical thread linking the cited documents to the claimed invention.
• Section 3(d) applies only to inventions that are new forms of a known substance and is put to the test of enhanced therapeutic efficacy. Section 3(d) may also apply to combinations involving derivatives of a known substance, whether alone or with the known substance itself. However, a combination of two distinct active drugs cannot be treated as derivatives of each other and therefore falls outside the scope of Section 3(d).
• Section 10(4) does not mandate inclusion of illustrative examples for every conceivable embodiment or specific combination falling within the scope of the claims. Claims are generalisations of the disclosed examples and must be read broadly in a technically meaningful manner. However, functional terms in the claims cannot be interpreted in a manner that contradicts the overall teaching of the specification; the disclosure must facilitate the invention.