A rose by any other name, speaks the same???!!!!

A short synopsis of an interesting decision on patent law by a court in Bombay:

Speaking Roses International Inc. v. Controller-General of Patents & Anr.
(Misc. Petition No. 13/2006)

Decision date: 12th February 2007

• Petitioners applied for a patent on 19.09.2002 for the method of providing an image on an organic product (flowers) however, the Respondent rejected the application by an order dated 19.04.2006.
• The petition came up on board normally but the Respondents failed to appear despite service and notice numerous times.
• The order of the Respondents was set aside and the Petitioners were granted a patent for ‘providing an image on the organic product’ while disagreeing with the order on the following grounds:

1. The provisions of Sec. 3(j), the Patents Act, 1970

Sec. 3(j) states that plants and animals or biological processes cannot be patented. The Petitioners require a patent for providing an image on flowers, not the flowers themselves. The said process is a mechanical process, not biological. Hence, there is no bar to the grant of patent for making an image of an organic product by a non-biological process. The Petitioner’s claim falls completely outside the purview of Sec. 3(j).

2. Inventive step

The earlier patents were granted to SKONECKI (method of putting a message or a drawing by means of an applicator such as pen which contains pigmented oil based paint and requires pressure to be put on the flowers causing indentation of the flower and cellular damage), CRONER and JONES (method of etching, cutting and/or altering the surface of the flower or organic material with computer-controlled laser energy. The image is marked by cutting and altering over the surface of the flower by way of a laser beam. There are alterations of the material of the organic product and causes deterioration.) The Petitioner’s method does not involve either writing with a pen, applying thermal pressure, or cutting the organic product hence, resulting in a more temporary and less permanent image put lightly on the surface without causing any damage, cut or indentation on the delicate petals on which the image is pad printed. There is no patentee who has used a process similar to that of the Petitioners. Hence, the patent shows an inventive step and conforms with the ‘novelty’ requirement of a patent.

3. Title of the invention

Their application for ‘providing an image on an organic product’ is precise, concise and definite. The method shown in the application is also for the same hence, the method claimed in the title is correct and the objection shows a misunderstanding of the written claim of the Petitioner.

4. Definition of the invention

The objection relates to inconsistency of the title with the claim of the Petitioners however, this is similar to the objection above. Its title shows that the patent is for a method and not the product. The method is explained in a summary along with illustrations annexed to their application. Hence, it sets out the object of the entire exercise so the objection has to be rejected.


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