The Delhi High Court has ordered a fresh review of a patent application filed by the President and Fellows of Harvard College. The application concerns lab-engineered insulin-producing cells.
Justice Tejas Karia heard the matter in President & Fellows of Harvard College v. Controller of Patent. The Court found that the Patent Office ignored the amended claims filed by Harvard. Therefore, it held that the omission amounted to a serious error.
The Court set aside the 2022 refusal order. It then sent the matter back to the Controller for reconsideration. Further, the Controller must examine the amended claims along with the written submissions. The Court also directed the Controller to pass a detailed order within six months. In addition, it said Harvard must receive a proper hearing.
Harvard filed the patent application in 2016. The invention is titled “SC-β Cells and Compositions and Methods for Generating the Same.” It relates to stem cell-derived pancreatic β cells. These cells may help treat diabetes.
During examination, the Patent Office raised several objections. In particular, it questioned clarity, disclosure, and patentability. After a hearing in 2021, Harvard submitted amended claims with written submissions.
However, on August 25, 2022, the Controller rejected the application. The Controller held that the application did not meet legal requirements. Specifically, the order cited Section 3(j), Section 3(e), Section 10(4), and Section 10(5) of the Patents Act.
Before the High Court, Harvard argued that the amended claims changed the scope of the invention. While the original claims focused on compositions, the amended claims focused on the engineered pancreatic β cells.
The Court accepted this argument. It found that the Controller examined only the original claims. However, the Controller did not assess the amended claims. As a result, the Court held that the approach was flawed.
The Court said amended claims can change the nature of an invention. They can also affect the objections raised. Therefore, the authority must examine them carefully.
Accordingly, the Court set aside the refusal order. It directed the Controller to reconsider the application afresh. Before passing the order, the Controller must hear Harvard. At the same time, the Court clarified that it did not examine the merits of the invention.
Advocates Satyapal Arora, Ashish Sharma, Kuldeep Kumar Singh, and Nitin Sharma appeared for Harvard. Meanwhile, Advocates Balendu Shekhar (CGSC), Krishna Chaitanya, Rajkumar Maurya, Divyansh Singh Dev, and Tanisha Samanta appeared for the Indian patent authorities.
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