Shivarpita Nailwal & Ankita Sabharwal
Analysis of lack of inventive step a must for a reasoned refusal Order: Delhi High Court
Introduction
The Hon’ble High Court of Delhi in the case of Gogoro Inc. vs The Controller of Patents And Designs & Anr.[1]has asserted that in the absence of a reasoned analysis into the subject matter of an invention, arriving at a bare conclusion for rejection would be contrary to the provisions of Section 2(1) (ja) of the Indian Patents Act, 1970 which define “inventive step”.
Background
The present appeal was instituted by Gogoro Inc. (hereinafter the “Appellant”) challenging the impugned order by the ld. Asst. Controller of Patents through which the Appellant’s application for an invention titled "apparatus, method and article for authentication, security and control of power storage devices such as batteries” was rejected by the Patent Office. The subject application 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.
It was the case of the Appellant that the impugned order was completely unreasoned. It was further contended that all the three prior arts which were cited i.e., D1, D2 and D3 in the subject application were not considered by the ld. Asst. Controller while passing the impugned order and the ld. Asst. Controller only placed reliance on D3.
Moreover, no reason was allegedly provided by the Controller regarding why there exists a lack of inventive step in the invention in question. It was also asserted by the Plaintiff that the subject application consisted of both independent device and independent method claims. However, the independent method claims were also not considered by the Controller and there was no clarity in the impugned order as to which of the claims lacked inventive step.
The ld. Asst. Controller on the other hand rebutted these claims and asserted that the application was rejected solely on the ground of inventive step and not on the ground of lack of novelty and all three prior arts were duly considered before passing of the impugned order.
Findings of the Court
The Court, while placing reliance on the impugned order observed that there was lack of clarity as to whether the application was rejected for lack of novelty or for inventive step.
The Court placed reliance on the case of Agriboard International LLC. v. Deputy Controller of Patents & Designs[2] wherein it was held that- “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 under Section 2(1)(ja) of the Act would be contrary to the provision itself.
According to the said judgment, 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.
Without a discussion on these three elements, arriving at a bare conclusion that the subject invention is lacking inventive step would be contrary to the provision of S. 2(1) (ja) itself.
In view of the aforementioned findings, the Court asserted that while arriving at the conclusion that there is a lack of inventive step, there was no elaboration or reasons given by the Asst. Controller as to why the application is being held to be lacking inventive step in view of the prior arts D1, D2 and D3.
The Appeal was accordingly decided in favour of the Appellant and the Application was returned to the Indian patent office for expeditious disposal owing to the fact that over 8 years have elapsed since its filing.
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