Patent Refusal Set Aside for Lack of Independent Claim Analysis and Non-Adherence to Five-Step Test

The Appellant filed a National Phase Application (No. 201617030967) on September 10, 2016, for a "Method of controlling insects and insecticide for use therein".

The invention relates to using food-grade synthetic amorphous silica of specific particle sizes (100-150nm) to treat stored grain.

Throughout the prosecution, the Respondent issued multiple hearing notices citing various sets of prior arts (D1–D7) and raising inconsistent objections under Sections 3(d), 3(e), 3(h), 3(p), and 2(1)(ac).

On May 9, 2024, the Respondent refused the patent under Section 15 of the Patents Act, 1970, on grounds of lack of inventive step (Section 2(1)(ja)) and non-patentability (Section 3(d)), asserting the method was "mere use of a known process".

The Appellant challenged this order as being unreasoned and procedurally flawed.

Whether the impugned order qualifies as a reasoned order and complies with the mandatory five-step test for determining inventive step.

Whether the claimed invention lacks an inventive step under Section 2(1)(ja) in view of prior arts D1–D7.

Whether the claims are barred under Section 3(d) as a "mere use of a known process".

The court primarily applied Section 2(1)(ja) of the Patents Act, 1970, regarding the "inventive step" involving technical advancement or economic significance.

It strictly enforced the five-step sequential test for obviousness established in *F. Hoffman-La Roche Ltd. & Anr. v. Cipla Ltd.* (2015).

Regarding Section 3(d), the court looked at the proviso regarding the "mere use of a known process" unless it results in a new product or employs at least one new reactant.

It further noted the persuasive value of foreign grants in jurisdictions like Europe and Canada as per *Otsuka Pharmaceutical Co. Ltd. v. Controller of Patents*.

The Court found the Respondent's order fundamentally flawed as it failed to apply the *Hoffman-La Roche* five-step test sequentially.

The Respondent identified the "person skilled in the art" but failed to identify the specific inventive concept or analyze the technical differences between the claimed invention and prior arts D1–D7.

The court noted the Appellant had provided detailed distinctions—such as the specific purity (98%), particle size (100-150nm), and the achievement of 100% mortality for 45 days—which the Respondent ignored with "conclusions" rather than "reasoning".

Regarding Section 3(d), the Court held the Respondent failed to identify which "known process" was being used or analyze if the specific synthetic amorphous silica constituted a "new reactant".

The Court also criticized the Respondent for ignoring the fact that similar claims were granted in multiple foreign jurisdictions.

The Court quashed and set aside the order dated May 9, 2024.

The matter was remanded to the Respondent for *de novo* consideration restricted to Sections 2(1)(ja) and 3(d) based on prior arts D1–D7.

The Respondent was directed to pass a reasoned, speaking order within two months after providing the Appellant an opportunity for a hearing.