Court gives Nod to Patent for Image on Flowers

A few years ago, the Bombay High Court had reversed an order of rejection of a patent by the Controller-General of Patents. It is this case, titled Speaking Roses International Inc. vs Controller-General Of Patents And Anr. [citations: 2007 (109) Bom LR 630, MIPR 2007 (2) 75; full judgment available here], that forms of the subject of this post.

The Petitioners, viz. Speaking Roses international Inc., had on September 19, 2002, applied for a patent for “providing an image on an Organic Product, being flowers”. Subsequently, they were given the First Examination Report (FER) as well as the Second Examination Report (SER), both of which they had replied to and complied with.

However, by an order dated April 19, 2006, the Respondent had rejected said application on the following 5 major grounds.

The first ground of rejection consisted of the allegation that the application was in contravention of Section 3(j) of the Patents Act, 1970.

The aforesaid section, in its sub-clauses (a) to (p), enumerates what cannot be considered as inventions and as per sub-clause (j), such exclusion extends to “Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.” This sub-clause thus does not allow grant of patent for plants or for any biological processes for production or propagation of plants.

However, Dalvi, J., who was presiding over the case, held that from the very application of the Petitioners, it became apparent that the patent sought was not for any flowers or organic products, but for providing an Image on an organic product. Hence it was not a plant that was being sought to be patented. Furthermore, such image was to be created by a mechanical process and not a biological one. Therefore, the claim did not fall within the scope of the aforesaid Section 3(j).

The second ground of objection was that 3 other inventors, viz. Skonecki, Croner and Jones, had been previously granted patents for identical purpose and in light of that fact, the Petitioners’ claim lacked the necessary inventive step to qualify for a patent.

The Petitioners, however, argued that their product was substantially different from those of the aforesaid patentees. For example, Skonecki used the method of putting a message or a drawing by means of applicator such as a pen containing a pigmented oil-based paint and required pressure to be put on the flowers causing an indentation of the flowers and cellular damage. The Petitioners, on the other hand, had been using a pad/roller as a transfer medium, which resulted in no such damage. Again, Jones marked the image by cutting and altering over the surface of the flower by a computer-controlled laser beam, which caused alterations of the material of the organic product and subsequent quick deterioration. However, the Petitioners’ process of pad printing did not cause any such alteration.

Having considered the aforesaid arguments, the Court held that the Petitioners were the first to have applied for the process they have claimed a patent for and hence the requirements of inventive step and novelty stood satisfied.

The remaining 3 grounds of objection included the allegations that the Petitioners’ claim does not sufficiently define the invention, lack of clarity of the title of the patented product and the inconsistency of the title with the claims made by the Petitioners. Regarding these, the Court was of the opinion that the Petitioners intended to obtain a patent on the mechanical process of imprinting the message by way of pad printing on an organic product and the hence the title of their application, being for “Providing an image on an Organic Product”, appeared to be precise, concise and definite.

Any objection on the Respondent’s part of the patent being sought on the organic product was overruled by the judiciary and it was opined that Respondent had unfortunately fallen victim to a complete misunderstanding of the nature of the Petitioners’ claim. The objection of the Respondent of the title’s inconsistency with the claims also met with a similar fate. The Court went on to comment that the Petitioners’ illustrative explanation of the method appeared to be in perfect consistency with their claim for a method patent as against a product patent. Moreover, the summary of the invention, provided by the Petitioners in the application, renders the invention well-defined, by way of clarifying the methods involved, the type of images to be imprinted upon specifically illustrated organic products and a clear object of the exercise in its entirety. The objection of the claims providing insufficient definition of the invention, too therefore, falls short.

The Court also held that the Petitioners need not amend their claims under such circumstances and refused to consider further objections of the Respondent regarding the feasibility of expanding the scope of the claim.

Another interesting, albeit technical, observation of the Court in this case was that a patent application could not be rejected merely on the ground that only one of the assignees of the patent had filed the application.

Finally, after consideration of all the aforementioned arguments, the Court decided to accept the Petitioners’ contentions, set aside the Respondent’s order of rejection of the patent application and granted the patent to the Petitioners.

Shouvik Kumar Guha

Shouvik Kumar Guha

Shouvik is at present employed as a Research Associate and a Teaching Assistant at The W.B. National University of Juridical Sciences, Kolkata. He has obtained his B.A. LL.B. (Hons.) degree from NUJS itself and is also currently pursuing his LL.M. degree from the same university. From his very year at law school, he had been attracted towards the discipline of Intellectual Property and that interest has been kindled further in course of time. The interface between IP and other disciplines such as Economics, Anti-trust Law, Human Rights, World Trade Law and the technological developments relating thereto, has especially caught his attention since then. He’s authored several papers on issues relating to IP and other legal disciplines for journals, books, magazines and conferences in national as well as international levels. He is also currently co-heading an organization called Lexbiosis, which is an endeavor meant to facilitate the collaboration between the legal industry and academia.

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