Delhi High Court Allows Scipharm to Drop Method Claim, Revives Stem Cell Patent Application for Remaining Composition Claims

Delhi High Court Allows Scipharm to Drop Method Claim, Revives Stem Cell Patent Application for Remaining Composition Claims

Introduction

The Delhi High Court allowed Scipharm SARL’s patent appeal in part and permitted amendment of the disputed claims in its patent application titled “Method for Enhancing Engraftment of Haematopoietic Stem Cells.” The Court held that since the only surviving objection under Section 3(i) of the Patents Act, 1970 related solely to Claim 1, deletion of that claim would sufficiently resolve the issue. Accordingly, the matter was remanded to the Controller for fresh consideration of the remaining claims.

Factual Background

The appellant had filed Indian Patent Application No. 6771/DELNP/2013 for a method concerning enhancement of engraftment of haematopoietic stem cells. The patent application was rejected by the Assistant Controller by order dated 29.05.2020 under Section 15 of the Patents Act, primarily on the ground of non-patentability under Section 3(i).

During examination, the Controller initially raised objections on inventive step, non-patentability, sufficiency of disclosure, and clarity. At the hearing stage, however, the Controller expressly accepted the appellant’s responses on inventive step under Section 2(1)(ja), Section 3(e), and Section 10(4) relating to sufficiency and clarity. The only objection that remained was under Section 3(i) on the reasoning that the invention necessarily involved an essential step of obtaining haematopoietic stem cells, which in practice required a surgical procedure and therefore fell within the statutory bar.

The Controller held that deletion of the specific “obtaining” step from the claim language did not cure the defect because the omitted step remained an essential part of performing the invention.

Procedural Background

Scipharm challenged the rejection order before the Delhi High Court in a patent appeal. During the pendency of the appeal, the appellant communicated to the Patent Office its willingness to delete Claim 1 while retaining Claims 2 to 5 in order to resolve the Section 3(i) objection.

In response, the Controller filed an additional affidavit acknowledging that the rejection was based solely on Claim 1 and stating that if Claim 1 were deleted, the objection would stand resolved. The Controller further stated that there were no surviving objections to the composition claims, and therefore the matter could be remanded for reconsideration with the amended claim set.

Issues

1. Whether the surviving objection under Section 3(i) was confined only to Claim 1.

2. Whether the High Court could permit amendment of claims during the pendency of the appeal.

3. Whether the matter should be remanded for fresh consideration of the amended patent claims.

Contentions of Parties

The appellant contended that the Controller had already accepted all objections except the Section 3(i) issue linked to Claim 1. To bring finality to the dispute, it volunteered to delete the offending claim and proceed only with the remaining composition-based claims.

The respondents, through the Controller’s additional affidavit, fairly conceded that the patent application had been refused only because of Claim 1 and that deletion of the same would remove the statutory objection. It was submitted that the matter may therefore be remanded for grant consideration of Claims 2 to 5.

Reasoning and Analysis

Justice Tushar Rao Gedela noted that the rejection order itself made it clear that all other objections had already been successfully overcome by the appellant, including inventive step and sufficiency requirements. Thus, the sole impediment was the Section 3(i) objection which attached only to the method claim.

The Court relied on earlier precedents where claim amendments had been permitted at the appellate stage, particularly where such amendments were explanatory, restrictive, or in the nature of disclaimers rather than an expansion of the original claim scope. It held that deletion of Claim 1 did not broaden the invention but merely removed the portion attracting statutory exclusion.

Given the Controller’s own categorical stand that no further objections survived in respect of the remaining claims, the Court found it appropriate to allow the amendment and remand the matter for a fresh merits-based decision.

The Court clarified that it had not adjudicated the substantive patentability merits of the surviving claims, and the Controller was directed to decide the matter independently and uninfluenced by any observations in the appellate order.

Decision

The Delhi High Court allowed the appeal to the limited extent of permitting deletion of Claim 1 and remanded the patent application to the Controller’s office for fresh consideration of Claims 2 to 5. The Controller was directed to process the amended application within three months, after affording the appellant an opportunity of hearing. The appeal was disposed of without costs.

In this case the appellant was represented by Ms. Naina Gupta, Mr. Anshul Saurastri and Mr. Jay Shah, Advocates.