Calcutta High Court Upholds Rejection of German Research Organisation's Patent For Biomass Growth Method

The Calcutta High Court has dismissed an appeal filed by German research organisation Fraunhofer Gesellschaft against the rejection of its patent application for a method of stimulating biomass growth in a bioreactor.

It held that the invention's specification was excessively broad and failed to sufficiently disclose how the invention could be performed. The court also found that the application did not disclose the source and geographical origin of the biological material used in the invention.

Justice Ravi Krishan Kapur delivered the judgment on June 17. He upheld the Controller of Patents' order rejecting the patent application.

The invention, titled "Method for Stimulating the Growth of Biomass in a Liquid Inside a Bioreactor," was filed in March 2021. After examining the application, the Controller found that the specification lacked clarity, conciseness and definitiveness.

Although Fraunhofer amended its claims following the First Examination Report, the Controller concluded that the deficiencies remained. The application was subsequently rejected.

Before the High Court, Fraunhofer argued that the Controller had introduced fresh objections at the hearing stage without conducting a further examination. According to the organisation, this violated the procedure prescribed under the Patents Act. It also contended that patent law does not require inventors to provide working examples covering the entire breadth of the claimed invention.

The Controller opposed the appeal. It argued that the specification contained vague expressions such as "at time intervals," "periodically," "at most," and "a maximum of."

It also pointed out that the operational parameters extended from "minutes to months." According to the Controller, the specification neither provided working examples nor disclosed sufficient experimental parameters to enable a person skilled in the art to reproduce the invention.

Agreeing with the Controller, the court found that the invention lacked the level of disclosure required for patent protection.

"The specification altogether is essentially empty. It describes functional results and gives open ranges which would necessarily lead to excessive experimentation and uncertainty," the court observed.

The court also rejected Fraunhofer's contention that it was not required to disclose the source and geographical origin of the biological material because the biomass itself was not being claimed as the invention.

It noted that Fraunhofer had defined the biological material in its written submissions as "micro-organisms, cells and/or other constituents cultivated in a bioreactor."

The organisation had also admitted that it did not disclose their source or geographical origin.

The court held that disclosure of the source and geographical origin of biological material used in an invention is mandatory. It noted that the requirement was introduced to prevent biopiracy, protect India's genetic resources and facilitate compliance with the Biological Diversity Act, 2002, and the Convention on Biological Diversity.

"Failure to disclose the biological source and origin is a direct threat to the sufficiency of the specification and such lapse is critical and disqualifies the applicant from being granted a patent," the court held.

Rejecting the procedural challenge, the court found that objections under the Patents Act had already been raised during examination. It held that the hearing notice sufficiently informed Fraunhofer of the issues.

Since the amendments did not satisfy the Controller and no major amendment had been made to the specification, the Controller was justified in deciding the application without conducting a further examination.

"It makes little sense to reward someone for disclosing their invention with a key element of the invention missing or the members of the public having to undertake additional or onerous research before they are in a position to reproduce the invention," the court observed.

Finding no illegality, procedural irregularity, or perversity in the Controller's order, the court dismissed the appeal.