IIT-M’s method of doping potassium lacks inventive step; not eligible for patent, rules Madras High Court

Madras High Court rules IIT-M's method of doping potassium lacks inventive step, making it ineligible for patent.

The Madras High Court has held that Indian Institute of Technology-Madras’ (IIT-M) method of doping potassium into ammonium perchlorate, for increasing the burn rates in solid propellants that are used in space and defence applications, lacks an inventive step and therefore not eligible for patent.

Justice Senthilkumar Ramamoorthy dismissed an appeal preferred by IIT-M against the rejection of its application by the Controller of Patents and Designs on April 20, 2020. He said, the claimed invention was not patentable since the processes were well known and they do not result in a new product.

In 2013 the IIT-M had filed the patent application for the method of doping potassium. The application was published in 2015 and the First Examination Report was issued in 2018 raising objections on grounds that the claimed invention lacked novelty/inventive step and therefore patent ineligible.

Thereafter, IIT-M filed its response to the FER in 2019 and amended the claim. Nevertheless, the Controller rejected the application under Sections 2(1)(ja), 3(d) and 3(a) of the Patents Act, 1970 leading to an appeal before the erstwhile Intellectual Property Appellate Board (IPAB) in 2020. After the abolition of the IPAB in 2021, the appeal was transferred to the High Court and renumbered in 2023.

Dismissing the appeal on merits, Justice Ramamoorthy pointed out the IIT-M’s method of doping potassium involved 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 was the claim of the institute that the ammonium perchlorate would acquire potassium from materials such as stainless steel, cotton cloth or filter paper used during the filtering process and the amount of potassium being doped in ammonium perchlorate would depend on the type of filtering material and the time of exposure of the solution to the filtering material.

However, the Judge said, “Public policy mandates prohibition of the grant of monopoly rights to an already known process that adds no scientific or economic value in the relevant field. Accordingly, an invention which makes mere use of a known process that does not result in a new product or does not employ a new reactant is excluded from patentability as per Section 3(d) of the Patents Act.”