Court Finds Procedural Lapses and Inadequate Analysis in Rejecting University of North Texas' Patent Application on THC Detection Technology
In a significant decision, the Delhi High Court has quashed the rejection of a patent application filed by the University of North Texas, pertaining to innovative technology for detecting cannabinoids in breath samples. Justice Jyoti Singh of the Delhi High Court found procedural lapses and insufficient reasoning in the initial rejection of the patent application by the Assistant Controller of Patents and Designs.
The university's application, titled "Technologies For Rapid Detection And Quantitation Of Volatile Organic Compounds (VOCS) Using Breath Samples," was originally denied on January 31, 2025. The Assistant Controller cited a lack of inventive step, issues with clarity and sufficiency of disclosure, and categorized the invention as a non-patentable diagnostic method under Section 3(i) of the Patents Act, 1970.
The court highlighted several procedural shortcomings, particularly the failure to sequentially apply the five-step test for inventive step, as established in prior judicial precedents. This includes identifying an ordinary person skilled in the art and analyzing the inventive concept thoroughly. The court observed that the Assistant Controller did not adequately differentiate the invention from prior art documents or provide a detailed analysis of the sufficiency of disclosure.
Moreover, the court found that the Assistant Controller incorrectly categorized the invention as a diagnostic method without considering the specific legal definitions and criteria. The claimed invention is geared towards detecting cannabinoids, such as THC, in breath samples to determine marijuana influence, rather than diagnosing a disease or disorder.
Justice Singh emphasized the need for a detailed, reasoned, and speaking order upon reconsideration of the patent application. The court has directed the Assistant Controller to re-evaluate the application within four months, providing the University of North Texas with an opportunity for a hearing and considering their responses to the initial examination report.
This decision underscores the importance of thorough procedural adherence and detailed reasoning in patent application assessments, particularly concerning the inventive step and sufficiency of disclosure.
Bottom line:-
Patent Law - Impugned order rejecting patent application quashed and remanded for reconsideration due to procedural lapses in applying the five-step test for inventive step, inadequate reasoning on sufficiency of disclosure, and incorrect application of Section 3(i) of the Patents Act, 1970 regarding diagnostic methods.
Statutory provision(s):
Patents Act, 1970 Sections 2(1)(ja), 10(4), 3(i), 117A(2)
