[Patents Act] HC: Merely arriving at a bare conclusion that the subject invention lacks inventive step would be contrary to Section 2(1) (ja) of the Act

  

The Single Bench of the Delhi High Court in the case of Gogoro Inc vs The Controller of Patents And Designs & Anr. consisting of Justice Prathiba M. Singh reiterated that while rejecting an application for lack of inventive step, discussion on prior art, the subject invention and manner in which the subject invention would be obvious to a person skilled in the art is mandatory. It was also noted that merely arriving at a bare conclusion that the subject invention lacks inventive step would be contrary to Section 2(1) (ja) of the Patents Act, 1970 which defines “inventive step”.

Facts

The appellant filed the present appeal challenging the impugned order by the ld. Asst. Controller of Patents through which the Appellant’s application for an invention was rejected by the Patent Office. The application of the Appellant was refused on the ground that the section 2(1)(j) of the Patents Act, 1970 (“the Act”), which defines “invention”, was not complied with.

Contentions Made

Petitioner: It was contended that the impugned order was completely unreasoned. i.e., the patent was rejected for lack of inventive step but in paragraph 5 of the impugned order, it was stated that Section 2(1)(j) of the Act was not complied with. It was also contended that there was no clarity in the impugned order as to which of the claims lack inventive step. It was also contended that the petitioner wished to amend the claims to overcome the objections of the Patent Office.

 

Respondent: It was contended that the application of the Appellant was rejected only on the ground of inventive step and not on the ground of lack of novelty. It was also contended that prior arts were elaborated and dealt with and was elaborated upon in the impugned order.

Observations of the Court

The Bench, relying on Agriboard International LLC. v. Deputy Controller of Patents & Designs, reiterated that while rejecting an application for lack of inventive step, discussion on prior art, the subject invention and manner in which the subject invention would be obvious to a person skilled in the art is mandatory. It was also noted that merely arriving at a bare conclusion that the subject invention lacks inventive step would be contrary to Section 2(1) (ja) of the Act itself which defines “inventive step”. It reproduced the following extract:

“While rejecting an invention for lack of inventive step, the Controller has to consider three elements-

• the invention disclosed in the prior art,
• the invention disclosed in the application under consideration, and
• the manner in which subject invention would be obvious to a person skilled in the art...

Thus, the Controller has to analyse as to what is the existing knowledge and how the person skilled in the art would move from the existing knowledge to the subject invention, captured in the application under consideration. Without such an analysis, the rejection of the patent application u/s 2(1) (ja) of the Act would be contrary to the provision itself.”

Judgment

The Bench, noting the completely unreasoned nature of the impugned order passed by the ld. Asst. Controller and the fact that there was no discussion as to why the application was held to be lacking inventive step in view of the prior arts, concluded that the impugned order was liable to be set aside. The application was restored to its original position. Regarding the submission that the Appellant wished to amend the claims to overcome the objections of the Patent Office, it directed the amended claims be filed before the Controller within 4 weeks and to be considered by the Patent Office in accordance with law.

 

Case: Gogoro Inc vs The Controller of Patents And Designs & Anr.

Citation: C.A.(COMM.IPD-PAT) 25/2021

Bench: Justice Prathiba M. Singh

 

Decided on: 24^th August 2022

Read Judgment ;

 

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