The Delhi High Court opined that the objection on lack of inventiveness under Section 2(1)(ja) of the Patents Act, 1970 (hereinafter referred to as the “Act”) has to be explained. In the present case, the order rejected the patent based on "common general knowledge" without providing any reference or explanation as to why such knowledge would apply to that feature.
Additionally, the Bench highlighted the importance of updating the manual of the Patent Office to stay abreast of the growing number of patent applications in India and to effectively handle intricate issues like objections related to lack of clarity and succinctness.
Brief Facts:
A Petition was filed before the High Court challenging the impugned order of the Assistant Controller of Patents and Designs, Indian Patent Office, Delhi ( “Controller”) refusing the grant of patent in respect of the patent filed by the Appellants.
Brief Background:
The Appellants had filed a national phase application at the Indian Patent Office for the grant of a patent, titled 'Manufacturing of Decorative Laminates by Inkjet’.' Subsequently, on 27th April 2019, the Patent Office issued a First Examination Report (“FER”) raising objections under Sections 2(1)(j), 2(1)(ja), 10(4), and 10(5) of the Act.
In response to the FER, the Appellants filed a detailed response along with an amended set of claims. However, the Patent Office passed an order rejecting the application.
The amended claims were deemed inadequate under Sections 10(4)(c) and 10(5) of the Act due to their vagueness and indefinite scope, as well as being non-patentable under Section 2(1)(ja) of the Act. Hence, the present proceedings.
Contentions of the Appellants:
It was argued that the order incorrectly stated that the characterised feature 5b was disclosed in D5, despite D5 teaching "application weight or wet weight" instead of "total dry weight" as required by claim 1.
It was argued that the order incorrectly asserted that the terms of the claims were vague and indefinite, while in reality, the complete specification described the terms and they were widely used and clear to a person skilled in the art of patent specifications.
Contentions of the Respondents:
It was argued feature 5a, was considered obvious and lacking ingenuity, as it related to workshop modification optimization.
It was also asserted that it was deemed apparent to a person skilled in the art to combine the common general knowledge with the teachings of D5 and arrive at feature 5a.
Observations of the Court:
It was held that the objection on lack of inventiveness under Section 2(1)(ja) of the Act has to be explained. The order rejected feature 5b of claim 1 based on "common general knowledge" without providing any reference or explanation as to why such knowledge would apply to that feature.
Additionally, it was observed that characteristic feature 5a was essential and necessary for producing the desired quality of a dark wood laminate. The Appellant provided sufficient data and examples to demonstrate the desired result. To rely on "common general knowledge," it was necessary to specify the source and substantiate it with evidence such as references to textbooks, research articles, or standard documents.
Lastly, the Bench recommended that the Manual of Patent Office Practice and Procedure be updated or revised observing the increasing number of patent filings in India and the need to address complex matters, such as objections of lack of clarity and succinctness in areas like artificial intelligence, machine learning, agrochemicals, pharmaceuticals, and manufacturing methods. Adequate technical and patent analytics training for examiners and controllers was also suggested to enhance their capabilities in assessing aspects like clarity and succinctness of inventions.
The decision of the Court:
Based on the aforementioned findings, the High Court quashed the impugned order and allowed the petition.
Case Title: AGFA NV & Anr. v The Assistant Controller of Patents and Designs & Anr.
Case No.: CA (COMM. IPD PAT) 477 of 2022
Coram: Hon'ble Mr. Justice Amit Bansal
Advocates for Petitioner: Advs. Mr. Essenese Obhan, Ms. Aparna Kareer and Ms.Ayesha Guhathakurta
Advocates for Respondents: Advs. Mr. Harish Vaidyanathan Shankar, CGSC, Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat and Mr.Alexander Mathai Paikaday
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