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Published – June 16, 2024 02:27 pm IST – CHENNAI
A view of the Madras High Court buildings in Chennai. | Photo Credit: V. Ganesan
The Madras High Court has held that Indian Institute of Technology-Madras’ (IIT-M) method of doping potassium into ammonium perchlorate, for increasing the burn rates in solid propellants that are used in space and defence applications, lacks an inventive step and therefore not eligible for patent.
Justice Senthilkumar Ramamoorthy dismissed an appeal preferred by IIT-M against the rejection of its application by the Controller of Patents and Designs on April 20, 2020. He said, the claimed invention was not patentable since the processes were well known and they do not result in a new product.
In 2013 the IIT-M had filed the patent application for the method of doping potassium. The application was published in 2015 and the First Examination Report was issued in 2018 raising objections on grounds that the claimed invention lacked novelty/inventive step and therefore patent ineligible.
Thereafter, IIT-M filed its response to the FER in 2019 and amended the claim. Nevertheless, the Controller rejected the application under Sections 2(1)(ja), 3(d) and 3(a) of the Patents Act, 1970 leading to an appeal before the erstwhile Intellectual Property Appellate Board (IPAB) in 2020. After the abolition of the IPAB in 2021, the appeal was transferred to the High Court and renumbered in 2023.
Dismissing the appeal on merits, Justice Ramamoorthy pointed out the IIT-M’s method of doping potassium involved the steps of dissolving ammonium perchlorate in distilled water, filtering the solution to remove impurities, heating the filtrate to remove water and then placing the ammonium perchlorate in a hot air oven at 333K for two days to completely remove moisture.
It was the claim of the institute that the ammonium perchlorate would acquire potassium from materials such as stainless steel, cotton cloth or filter paper used during the filtering process and the amount of potassium being doped in ammonium perchlorate would depend on the type of filtering material and the time of exposure of the solution to the filtering material.
However, the Judge said, “Public policy mandates prohibition of the grant of monopoly rights to an already known process that adds no scientific or economic value in the relevant field. Accordingly, an invention which makes mere use of a known process that does not result in a new product or does not employ a new reactant is excluded from patentability as per Section 3(d) of the Patents Act.”
Referring to Oxford Dictionary of Chemistry to understand what constitutes a reactant, Justice Ramamoorthy said, “For a compound to be considered as a reactant, it must trigger or cause a chemical reaction to form a new compound.” However, in IIT-M’s claimed invention, the filtrate material was merely used for the purpose of filtering and there was nothing to indicate it causes a chemical reaction, he added.
“The claimed invention employs dissolution, filtration, heating, drying and reheating. All these processes are known. A new reactant is not used while adopting these known processes and these processes do not result in a new product,” the Judge wrote. He also ruled that it lacked any inventive step and therefore the rejection of the patent application under Section 2(1)(ja) was also valid.
The Judge said to surmount the inventive step test, the claimed invention must possess two essential characteristics. Firstly, it must exhibit technical advancement as compared to the existing knowledge or have economic significance in the industry or both of the above and secondly, the purported technical advancement must not be obvious to a person skilled in the art.
In the present case, IIT-M had contended that the inventive step of its claimed invention lies in eliminating the use of external reagents through the usage of filtrate material such as stainless steel sievecotton clothfilter paper wherein varying percentage weights of potassium gets doped into ammonium perchlorate resulting in recrystalised ammonium perchlorate with incremental thermal properties.
“Even assuming that such usage constitutes a technical advancement, it must not be obvious to a Person a Skilled in the Art [PSITA] for it to qualify as an inventive step,” the Judge said and added that a chemical engineer working in the field of composite solid propellants would qualify as a PSITA in the present case for conducting the obviousness analysis.
“In the claimed invention, the doping of potassium into ammonium perchlorate… happens in-situ during the filtration process. The claimed technical advance of choosing the type of filtrate material from and out of known filtering materials would be obvious to PSITA and therefore a common general knowledge,” the Judge concluded.
crime, law and justice / science (general)
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