Fact of the Case:
Milliken and Company, the appellant, challenged the refusal of their Indian patent application (no. 6093/DELNP/2013) for "Additive Compositions and Thermoplastic Polymer Compositions Comprising the Same" by the Assistant Controller of Patents and Designs. The rejection was based on two grounds: lack of inventive step and insufficiency of disclosure. Milliken contended that the Assistant Controller failed to consider a crucial statement by Dr. Nathan A. Mehl, an expert and employee of the company, filed during the post-hearing submissions.

Procedural Background (in brief):
The patent application was filed in India in 2013 and went through various stages, including the issuance of the First Examination Report (FER) and a pre-grant opposition. In 2023, the Assistant Controller refused the patent application under Section 15 of the Patents Act, 1970. The appellant then filed this appeal under Section 117(A) of the Patents Act, arguing that procedural irregularity occurred due to non-consideration of Dr. Mehl's statement, which addressed key objections. The matter was heard on 13th November 2024 and 11th March 2025.

Reasoning of Court:
The Court held that the appellant had submitted the expert statement of Dr. Nathan A. Mehl within the permissible time frame under Rule 28(7) of the Patent Rules, 2003. The Court rejected the respondent's argument that Dr. Mehl's status as an employee invalidated the independence or weight of his statement. The Court emphasized that industry experts, even if employees, are often competent to provide technical clarifications.

Additionally, the Court clarified that decisions of foreign patent offices, such as the European Patent Office's rejection of Dr. Mehl's statement, are not binding on Indian authorities. To support this view, the Court referred to the judgment in Communication Components Antenna Inc. v. Ace Technologies Corp. and Ors., 2019 SCC OnLine Del 9123, where it was held that foreign patent grants or rejections have only a persuasive value and cannot dictate the decision-making process of the Indian Patent Office. The Delhi High Court in that case had stated that claims in foreign jurisdictions could be referred to ensure that the invention is broadly the same and to avoid "evergreening" but cannot be treated as determinative for the Indian decision-making process.

Based on this, the Court concluded that the Assistant Controller should have independently evaluated Dr. Mehl's statement.

Decision:
The Court remanded the matter back to the Assistant Controller of Patents and Designs for a fresh hearing and a de novo consideration of the patent application, specifically directing the Assistant Controller to assess Dr. Nathan A. Mehl's statement on merits. A fresh speaking order was directed to be passed following the hearing.

Case Title: Milliken and Company vs Controller of Patents and Designs & Anr.
Date of Order: 11th March 2025
Case Number: C.A.(COMM.IPD-PAT) 15/2023
Neutral Citation: Not provided in the document
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

Decision:
The suit was decreed in favor of the plaintiffs. The defendants were permanently restrained from using "Liv-333" or any other mark deceptively similar to "Liv.52." The court awarded ₹10,91,567 as costs and ₹20 lakhs in damages, citing the need for deterrence. The decree was passed under Order VIII Rule 10 CPC due to the defendants' failure to file a defense.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539