Ms. Vindhya S. Mani, Ms. Naina Gupta, Mr. Bhuvan Malhotra, Ms. Vedika Singhvi, Mr v. THE ASSISTANT CONTROLLER OF PATENTS AND DESIGNS

Judgment

1. Vide the present appeal under Section 117A of the Patents Act, 19701 the appellant seeks to assail the order dated 30.01.2023 passed by the Assistant Controller of Patents and Designs2, who has rejected its Indian 1 Hereinafter referred as “1970 Act” 2 Hereinafter referred as “Controller” C.A.(COMM.IPD-PAT) 12/2023 Signature Not Verified Digitally Signed By:BABLOO SHAH Signing Date:29.05.2025 17:57:06 Patent Application No.4278/DELNP/2015 dated 19.05.20153 under Section 15 of the 1970 Act since “…The subject matter of claims 1-9 is not allowed u/s 2(1)(ja) as it does not involve any inventive step and is obvious in view of the combined teachings of cited documents D1 to D3. …”. As such, in effect the subject application has been rejected on the ground that it involves no “inventive step” under Section 2(1)(ja)4 of the 1970 Act. 2. Therefore, the short question for determination before this Court is “Whether any “inventive step” under Section 2(1)(ja) of the 1970 Act are involved in Claim no.1 to 9 of the subject application filed by the appellant?”. Brief narrative facts: 3. The appellant, Lummus Novolen Technology Gmbh, is a global provider of process technologies and value-driven energy solutions, including performance polypropylene (PP) polymers, a family of products that have the properties of recycled polymers and is a company incorporated under the laws of Germany and has its registered office at Gottlieb Daimler Str. 8 68165, Mannheim, Germany. 4. The appellant filed the subject application with title “HIGH PERFORMANCE ZIEFLERNATTA CATALYST SYSTEMS, PROCESS FOR PRODUCING SUCH MgC12 BASED CATALYSTS AND USE THEREOF” 3 Hereinafter referred as “subject application” 4 Section 2(ja) "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art. C.A.(COMM.IPD-PAT) 12/2023 Signature Not Verified Digitally Signed By:BABLOO SHAH Signing Date:29.05.2025 17:57:06 before the Patent Office, New Delhi5 on 19.05.2015, whereafter the request for examination thereof was filed on 19.05.2015, and the same was then published in the Patent Journal on 22.07.2016. 5. In the First Examination Report6 issued by the Patent Office on

12.02.2019, majorly the following issues were raised:- Subject matter of claims 1-13 lacks novelty under Section 2(1)(i) of “- the Act in view of the documents: i. D1: EP 1840138 Al; annexed herewith as Document 5. ii. D2: EP 1609805 Al; annexed herewith as Document 6. iii. D3: WO 2009152268 Al; annexed herewith as Document 7. Subject matter of claims 1 to 13 lacks inventive step under Section - 2(1)(ja) of the Act in view of the documents; i. D1: EP 1840138 A1 ii. D2: EP 1609805 Al iii. D3: WO 2009152268 Al - The abstracts, title and drawings do not meet the criteria of sufficiency of disclosure under Section 10(4) of the Act read with Rule 13(7) and Rule 15 of the Patent Rules, 2003. - - - scope of claim 1.” Subject matter of claims 1-13 do not meet the requirements of definitiveness under Section 10(4)(c) of the Act. Subject matter of claims 2-13 are inconsistent and beyond the

6. In response thereto, on 10.05.2019, the appellant also filed its amended claims before the Patent Office, whereafter, a Hearing Notice dated

23.02.2021 was issued by the Controller for 27.04.2021, however, since the appellant filed a request for adjournment, though the Controller issued an extended Hearing Notice for 13.08.2021 but raised the following substantive objections under Section 14 of the 1970 Act:- 5 Hereinafter referred as “Patent Office” 6 Hereinafter referred as “FER” C.A.(COMM.IPD-PAT) 12/2023 Signature Not Verified Digitally Signed By:BABLOO SHAH Signing Date:29.05.2025 17:57:06 “- The subject matter as claimed in claims 1-10 of the alleged invention is not patentable under Section 2(1)(ja) in view of the further cited documents; i. Dl: EP 1840138 Al ii. D2: EP 1609805 Al iii. D3: WO 2009152268 Al - The subject matter of the claims in the Indian Patent Application No. 4278/DELNP/2015 conflicts with the subject matter of the claims in Indian Patent Application No. 4277/DELNP/2015. The subject matter of claims 2-10 are inconsistent and beyond the - scope of claim 1.”

7. After attending the hearing, the appellant filed a written submission on

08.10.2021 wherein, it amended and deleted Claims 1 and 10, leaving amended Claims 1 to 9, whereafter, the Controller passed the impugned order on 30.01.2023, refusing to grant the Patent application. 8. Aggrieved thereby, the appellant has preferred the present appeal.

Contentions of learned counsel for Appellant: 9. Ms. Vindhya S. Mani, learned counsel for the appellant raised the following contentions:- 9.1. Since the impugned order is silent about or has any proper reasoning therein, as to why arguments in the written submissions were not found convincing to the respondent which violates the principles of natural justice. For this, reliance was placed upon Wisig Networks Private Limited vs. Controller General of Patents, Design, Trademark & Geographical Indications7; Assistant Commissioner Kota vs. Shukla & Bros8; and Kranti 7 2020 SCC OnLine IPAB 198 8 (2010) 4 SCC 785 C.A.(COMM.IPD-PAT) 12/2023 Signature Not Verified Digitally Signed By:BABLOO SHAH Signing Date:29.05.2025 17:57:06 Associates Private Limited & Anr. vs. Masood Ahmed Khan & Ors.9. 9.2. The Controller has not considered the technical advancement offered by the claimed invention i.e., new process for producing a Ziegler-Natta catalyst having improved activity of olefin polymerization essentially from non-phthalate polymers and the activity of the catalyst leading to higher product yields and reducing the quantity of the catalyst for olefin polymerization reaction which in turn reduces the catalyst cost and the amount of catalyst impurities in the polymers (reduced ash content), resulting in polymers with better performance profile and the invention in the present patent application relates to an Ziegler-Natta catalyst, particularly an improved method for making a Ziegler-Natta catalyst essentially using diether compounds as internal donor. 9.3. The Controller has merely reproduced the paragraphs in the impugned order from the decision of the European Patents Office dated 16.03.2021 in the corresponding European Application No.13802264.5, which is contrary to the settled position of law, particularly, since the patent jurisprudence is territorial in nature and each patent application has to considered on its own merits within every jurisdiction and not use ‘cut and paste’ methodology. For this, reliance was placed upon R.C. Sharma vs. Union of India & Ors.10; Dolby International Ab vs. The Assistant Controller of Patents & Designs11. 9.4. Similar claims have been granted in other jurisdictions inter alia United States of America, China, Japan, Republic of Korea and Israel which