A view of the Madras High Court building in Chennai. | Photo Credit: V. Ganesan
The Madras High Court held that the Indian Institute of Technology-Madras (IIT-M) method of doping potassium into ammonium perchlorate, to increase the rate of combustion in solid propellants used in space and defense applications, did not have an inventive step and therefore. not eligible for patent.
Justice Senthilkumar Ramamoorthy dismissed the appeal preferred by IIT-M against the rejection of the application by the Controller of Patents and Designs on April 20, 2020. in new products.
In 2013 IIT-M has filed a patent application for the potassium doping method. The application was published in 2015 and the First Examination Report was issued in 2018 which refuted it on the grounds that the claimed invention does not have a new/inventive step and is therefore patent ineligible.
After that, IIT-M filed a response to the FER in 2019 and amended the claim. However, the Controller rejected the application under Sections 2(1)(ja), 3(d) and 3(a) of the Patents Act, 1970 which led to an appeal before the Intellectual Property Appellate Board (IPAB) in 2020. IPAB’s abolition in 2021 , the appeal was transferred to the Supreme Court and changed number in 2023.
Rejecting the appeal on the merits, Justice Ramamoorthy pointed to the IIT-M potassium doping method which involves 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 is a statement from the institute that ammonium perchlorate will acquire potassium from materials such as stainless steel, cotton cloth or filter paper used during the filtering process and the amount of potassium doped in ammonium perchlorate will depend on the type of filtering material and the exposure time of the solution to the filtering material.
However, the Judge said, “Public policy dictates the prohibition of granting monopoly rights to known processes that do not add scientific or economic value to the relevant field. Thus, inventions that only use known processes that do not produce new products or do not use new reactants are not including patents under section 3(d) of the Patent Act.
Referring to the Oxford Dictionary of Chemistry to understand what constitutes a reactant, Judge Ramamoorthy said, “For a compound to be considered a reactant, it must trigger or cause a chemical reaction to form a new compound.” However, in the discovery claimed by IIT-M, the filtrate material was only used for filtering and there was no indication that it caused a chemical reaction, he added.
“The claimed invention uses dissolution, filtration, heating, drying and reheating. All these processes are known. New reactants are not used when using known processes and the process does not produce new products,” wrote Hakim. They also decided that there was no inventive step and therefore the rejection of the patent application under section 2 (1) (ja) was also correct.
The judge said to surmount the inventive step test, the claimed invention must have two important characteristics. First, it must show technical progress compared to existing knowledge or have economic significance in the industry or both of the above and second, the considered technical progress must not be obvious to a person skilled in the art.
In this case, IIT-M stated that the inventive step of the claimed invention is to eliminate the use of external reagents through the use of filter materials such as stainless steel sieve \ cotton cloth \ filter paper with different weight percentages of potassium. doped into ammonium perchlorate produces recrystallized ammonium perchlorate with additional thermal properties.
“Even considering that the use is a technical advance, it should not be obvious for a Person Skilled in the Art (PSITA) to be an inventive step,” Hakim said and added that chemical engineers working in the field. composite solid propellant would qualify as PSITA in the present case to conduct clarity analysis.
“In the claimed invention, the doping of potassium into ammonium perchlorate … occurs in situ during the filtration process. The claimed technical progress to select the type of filtrate material from and out of the known filter material would be obvious to PSITA and therefore common knowledge,” said the Judge.
