Syngene International Limited v Assistant Controller of Patents and Designs (2025)

Summary

“This appeal is directed against order dated 17.02.2020 rejecting Patent Application No.3091/CHE/2008 for the grant of patent for the claimed invention titled ‘A METHOD FOR PREDICTING ORGAN TOXICITY AND A SYSTEM THEREOF’.” “In the FER” (“First Examination Report”) “, objections were raised inter alia on grounds of lack of novelty, inventive step and exclusion from patentability under Section 3(i) & (k) of the Patents Act, 1970.” “By hearing notice dated 14.10.2019, the objection on the grounds of lack of inventive step and under Sections 3(i) & (k) were retained.” (para 1) In the hearing notice “the Controller recorded a finding that D1 failed to disclose the various types of equations mentioned in claims 1 & 16 and proceeded to record that equations are disclosed in D2 and D3.” (para 5) Counsel for the respondents submitted “that D1 was correctly identified as the closest prior art, but in view of dissonance between the hearing notice and the impugned order, reconsideration may be necessary.” (para 3)

The Court held that the findings of the impugned order “are clearly not in consonance with findings recorded in the hearing notice” and that “the conclusion on lack of novelty and inventive step cannot be sustained.” (para 6) On Section 3(k), “Since the conclusion with regard to exclusion under Section 3(k) was reached primarily on the ground that the claimed invention is not used in conjunction with novel hardware, this conclusion is liable to be interfered with.” (para 7) “For reasons aforesaid, impugned order dated 17.02.2020 is set aside and this appeal is disposed of with the following directions” (para 8), including that “an officer other than the officer who issued the impugned order shall undertake reconsideration.” (para 8)

What the court decided

1. The equations and D2, D3. “Thus, the Controller recorded a finding that D1 failed to disclose the various types of equations mentioned in claims 1 & 16 and proceeded to record that equations are disclosed in D2 and D3. On prima facie examination of prior arts D2 and D3, it appears that the equations listed in pages 74 to 81 of the paper book are not disclosed therein.” (para 5)
2. Order and hearing notice. “These findings are clearly not in consonance with findings recorded in the hearing notice. The Controller has recorded that the claimed invention not only lacks inventive step but also lacks novelty.” (para 6)
3. Novelty and a single prior art. “In order to record a finding that a claimed invention lacks novelty, it is necessary to conclude that every feature of the claimed invention is disclosed in D1. Even on prima facie assessment, there are differences between the features of the claimed invention and D1.” (para 6)
4. Mapping the flow chart. “Similarly, the conclusions drawn by mapping the flow chart of the claimed invention against figure 8 of D1 appears to proceed on the erroneous assumption that both the flow charts began by identifying the toxic state of the biological system. For these reasons, the conclusion on lack of novelty and inventive step cannot be sustained.” (para 6)
5. Novel hardware and section 3(k). The Controller had held that “the actual contribution of the invention solely lies in software and there is no specific hardware available in the claimed invention.” The Court held: “The Patent Office has recently issued guidelines on the examination of CRI” (“Computer Related Invention”) “. These guidelines provide that a claimed invention cannot be rejected as a computer programme per se merely because novel hardware is not deployed. Since the conclusion with regard to exclusion under Section 3(k) was reached primarily on the ground that the claimed invention is not used in conjunction with novel hardware, this conclusion is liable to be interfered with.” (para 7)
6. Procedure. Remand. “For reasons aforesaid, impugned order dated 17.02.2020 is set aside and this appeal is disposed of with the following directions:” “(i) The respondent is directed to reconsider Patent Application No.3091/CHE/2008 by taking note of the observations in this order and by applying the current guidelines on the examination of computer related inventions.” “(ii) In order to preclude the possibility of pre-determination, an officer other than the officer who issued the impugned order shall undertake reconsideration.” “(iii) After providing a reasonable opportunity to the appellant, a speaking order shall be issued within three months from the date of receipt of a copy of this order.” “(iv) There will be no order as to costs.” (para 8)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 16 October 2026.