Patentability of Atomic Energy Related Patent Application in India
Recently, the issue of patentability of Atomic Energy related patent application in India is decided in a Writ Petition [WPA NO. 2086 OF 2021] by Hon’ble Bombay High Court involving rejection of patent application title “Ultra Supercritical Boiler Header Alloy and Method of Preparation” [PCT/US2009/040019 corresponding Indian Patent Application IN’4211]
Content of Patent Application:
Invention of the said Patent Applicant relate to an alloy suitable for a header pipe in boiler applications and, more particularly, to a high temperature, high strength nickel (Ni)-cobalt (Co) Chromium (Cr) alloy for long-life service at 538oC to 816oC that offers a combination of strength, ductility, stability, toughness and fissure-free weldability as to render the alloy range uniquely suitable for the header pipe in ultra-supercritical boiler applications where essentially fissure-free joining of boiler tubes to the header is critical.
Why the Writ
Applicant filed request for examination but the application was not examined and was referred to the Department of Atomic Energy (DAE) under Section 20(6) of the Atomic Energy Act, 1962 for directions as to whether the invention is relating to Atomic Energy and whether the said Application should be refused or whether it can be processed. As DAE is the final authority to decide whether such patent can be granted.
In response thereto, the Department of Atomic Energy communicated that the invention does relate to Atomic Energy and hence the application be refused. However, no reasoning was given for refusal.
Contention Forwarded by the Applicant
Section 65 of Patents Act, 1970 (prior to its amendment on 01.01.2005) empowered the Controller to direct Applicant to amend the complete specification instead of refusing the application or revoking the patent (where already granted). Primarily dealt with the period of post acceptance of complete specification.
Post Amendment, Section 65 was amended to restrict the power of the Controller to post grant period and where Controller may permit the Patentee to amend the Complete specification instead of revoking the patent, as necessary.
The amendment was restricted to post grant of patent because the primary onus of communicating to Central Government about any atomic energy related invention was shifted upon the applicant. [See Section 20(4) of Atomic Energy Act, 1962]
So the contention of the Applicant was that post amendment of Section 65 of Patents Act, 1970 in the year 2005, the power of the Ld. Controller is restricted to revocation and there is no option for non-consideration.
Findings of Court
Hon’ble Court discussed the provisions of Section 2 of Atomic Energy Act, 1962; and Section 65 of Patents Act, 1970 and amendment made in latter provision on 01/01/2025
- In both the cases, what is noted is the permissibility of allowing the patentee to amend the complete specification in such a manner as he considers necessary instead of revocation of patent, if it is granted. Since the Application of the Petitioner has been kept pending since 2010, there is no question of its revocation, but on consideration of application, it is permissible for the Central Government to issue direction to the Controller to refuse to proceed the same, if it relates to atomic energy, but to save such an application from its non-consideration on the said ground, it is open for the patentee/applicant to amend the specification, so as to avoid its invention involving atomic energy, resulting into its complete rejection.
- There is absence of reasons in the said order.
- Court considered the definition of ‘Atomic energy’ to look into the scope of applicant’s invention.
- ‘Atomic Energy’ as per Act is defined the energy released from atomic nuclei as a result of any process, including the fission and fusion processes. And applicant contended that the invention no way amount to release of atomic energy, as per the specification has set out the summary of the invention and the detailed description of the invention, although reply affidavit faintly suggested that the invention involves release of atomic energy.
- Court set aside observing that it may be possible for the applicant to amend the complete specification if a reasoned order as to why the patent is rejected. In absence of any reasoning, the applicant is deprived of this opportunity.
Source- IPINDIA, Bombay High Court, WIPO, Patent, Trademark, Copyright, Design, Swarupa Ghosh (Patent Attornery and Advocate)