The Single Bench of the Delhi High Court in the case of AGFA NV & Anr. vs The Assistant Controller of Patents and Designs & Anr. consisting of Justice Amit Bansal opined that as the number of Patent filings in India is rapidly increasing, there is an imminent need to update the Manual of Patent Office Practice and Procedure so that the Examiners and Controllers can get better guidance on dealing with intricate matters like objections of lack of clarity and succinctness.
Facts:
The appellants filed an appeal u/s 117A of the Patents Act, 1970 (“the Act”) against the order of the Assistant Controller of Patents and Designs, Indian Patent Office, Delhi, which refused to grant a patent for their patent application no. 201617023479 (“subject patent”).
The appellants had filed a national phase application for a patent related to manufacturing decorative laminates by inkjet at the Indian Patent Office. The Patent Office issued objections and the appellants responded with an amended set of claims. A hearing was held but the objections were not resolved. The Patent Office ultimately rejected the application, leading to an appeal and written submissions from both parties. The amended claims were refused because they did not meet the requirements of Sections 10(4)(c) and 10(5) of the Act, as they were unclear and had an indefinite scope. Additionally, they were not considered patentable u/s 2(1) (ja) of the Act.
Observations of the Court:
The second objection, regarding lack of clarity, was addressed first by the Bench. The Controller had found that the claims in the patent application were not clear and succinct, and the scope of protection for the invention had not been clearly defined. The Controller determined that certain terms used in the patent application were unclear and lacked a specific definition. However, upon examining the complete specification of the patent application, it was found that the terms were adequately described and even included preferred embodiments. It also noted that the patent specification was intended for a person skilled in the relevant field, who would understand the terms in question. Therefore, the objections regarding lack of clarity or indefinite claims were held to be invalid.
Regarding the specific observation of the Controller that the Claims were not succinct, it opined that the first Claim was not too long because it needed to define interconnected features and expressions. The patentee had the right to draft Claims that protect all aspects of the invention, so the Claims were not lacking in succinctness. Reliance was placed on Doric Products Pty Ltd v. Lockwood Security Products Pty Ltd where it was held that unravelling all the claims in a Patent requires patience, time, and effort, but there are no alleged ambiguities if one does so. The issue is not with the length of the claims but with the attempt to compress many claims into one. However, this does not prove that the claims are not clear and concise.
Regarding the rejection on the ground of lack of inventiveness u/s 2(1) (ja) of the Act, the impugned order observed that feature 5b claimed in claim 1 came within the range disclosed in prior art document D5. But the Bench concurred with the appellant’s point that D5 relates to ‘application weight’ and not ‘total dry weight’ as required by the Independent Claim 1.
Regarding the objection that the feature when combined with the teachings of ‘common general knowledge’, merely became a workshop modification, it rejected the claim and noted that if the Controller rejected a patent application based on 'common general knowledge', they must specify where the knowledge came from and provide evidence to support that it was widely known before the patent application was filed. Reliance was placed on Generics (UK) Ltd. v. Daiichi Pharmaceuticals Co. Ltd. wherein it was held that there is no requirement for knowledge to be at the forefront of the mind of the person skilled in the art. Reliance was also placed on Groz-Beckert KG v. Union of India & Ors. wherein it was held that in determining inventive steps, the invention should be considered as a whole. In this case, the Controller did not provide any source for the common knowledge they used to reject the application, making it unclear which specific element of common knowledge was used to determine that the application lacked inventiveness.
It also opined that the order in question did not provide any explanation for the novelty or inventiveness of the claims in question and simply stated that the technical features were already disclosed in D5. Additionally, D5 did not mention anything about the ink-receiving layer being free of thermosetting resin. Moreover, it observed that corresponding patent applications had been granted in various jurisdictions, which included the USA, UK, Australia, China and various countries in Europe.
Judgment:
The impugned order dated 17th June 2022 was set aside and the Patent Office was directed to proceed to grant the patent, subject to completion of necessary formalities.
However, while parting with this judgment, the Bench noted that as the number of patent filings in India is increasing rapidly, the Manual of Patent Office Practice and Procedure needed to be updated to provide better guidance to examiners and controllers on how to deal with complex issues such as objections regarding clarity and succinctness. This was deemed especially important for patents involving areas such as artificial intelligence, machine learning, agrochemicals, pharmaceuticals, and manufacturing methods, as these often have many claims or interlinked features. It recommended the Office of the Controller General of Patents, Designs and Trademarks update its Manual for Practice to help Examiners and Controllers better evaluate the clarity and conciseness of inventions. Additionally, it suggested that Examiners and Controllers should receive sufficient technical and patent analytics training.
Case: AGFA NV & Anr. vs The Assistant Controller of Patents and Designs & Anr.
Citation: C.A.(COMM.IPD-PAT) 477/2022
Bench: Hon’ble Mr. Justice Amit Bansal
For Appellants: Advocates Mr. Essenese Obhan, Ms. Aparna Kareer and Ms. Ayesha Guhathakurta, Adv.
For Respondents: Advocates Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat and Mr. Alexander Mathai Paikaday.
Read Judgment @LatestLaws.com
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