INDIA: HC confirms synergistic combinations leading to new and improved results are patentable
Introduction
In a detailed order dated March 13, 2023, the Hon'ble Delhi High Court (hereinafter referred to as "the Hon'ble Court") in Biomoneta Research pvt ltd. vs Controller general of Patents Designs [C.A.(COMM.IPD-PAT) 297/2022] held that “It is a settled position in law that secondary considerations by themselves may not qualify an invention to become patentable but when a set of old results are combined in a new and profitable manner, a patent can be granted”. Importantly, the Hon’ble Court acknowledged and noted the relevancy of EPO Guidelines in respect of combination vs juxtaposition or aggregation as well as the grant of the corresponding US application.
Brief facts
The present patent appeal was instituted by Biomoneta Research (hereinafter the “Appellant”) challenging the impugned order by the Controller general of Patents Designs (hereinafter the “Respondent”) through which the Appellant’s application (201741016833) for an invention titled “Air Decontamination Assembly” was refused by the Indian Patent Office. The subject application was refused on the grounds of lack of inventive step under Section 2(1)(ja) of the Indian Patents Act(hereinafter, referred to as “the Act”).
Submissions on behalf of the parties
Appellant’s submissions:
The Counsel appearing for the Appellant highlighted the fact that the Appellant company has been awarded with several innovation awards in view of the subject patent and claims to be a ‘One Product, One Patent’ company where the subject patent is that one patent.
It was also highlighted that the existing air decontamination system in air purifiers work completely differently from the subject matter of the Appellant’s invention and mentioned several demerits for the same. The Applicant developed a new technology in the view of the conventional air purifiers which has various advantages.
Further, the Appellant highlighted that the corresponding US application was allowed wherein the same prior arts (basis which the application was refused in India) were submitted in the Information disclosure statement (IDS) filed in respect of said US application.
The Appellant focused on the advantages of the invention, namely:
Higher decontamination
Lower power consumption
Compactness of the device
Manufacturing at lower cost
Easier maintenance
The Appellant further claimed that the device disclosed in the invention has a higher commercial potential in the form of cheaper manufacturing costs and greater application.
Respondent’s submissions:
The Respondent argued relying on document D3 that the said document air purification filter for a “Disinfecting Air Filter” works almost on the same principles as the Applicant’s patent application. It was further submitted that the filter disclosed in the prior art document D3 is in fact, an advanced product as compared to the product which is the subject matter of the Appellants’ subject patent application which uses conducting plates which are parallelly installed in order to attract the microbes and pathogens by creation of an electric field.
It was the respondent’s submissions that a combined reading of D1 – D3 would result in a person skilled in the art to arrive at the invention claimed by the Appellant.
Hon’ble Court’s Analysis and Decision:
The Hon’ble Court considered the five step test laid down in F. Hoffmann-La Roche Ltd. and Ors. v. Cipla Ltd., 2016(65) PTC 1 (Del) for determining inventive step and lack of obviousness, namely:
“Step No.1 To identify an ordinary person skilled in the art;
Step No.2 To identify the inventive concept embodied in the patent;
Step No.3 To impute to a normal skilled but unimaginative ordinary person skilled in the art what was common general knowledge in the art at the priority date;
Step No.4 To identify the differences, if any, between the matter cited and the alleged invention and ascertain whether the differences are ordinary application of law or involve various different steps requiring multiple, theoretical and practical applications;
Step No.5 To decide whether those differences, viewed in the knowledge of alleged invention, constituted steps which would have been obvious to the ordinary person skilled in the art and rule out a hindside approach.”
After considering all three cited prior arts in detail, the Hon’ble Court observed that “the Controller’s order itself shows that the inventive step in the subject application is being defeated by a combination of elements in the D2 along with some elements of D1 and D3. This would be a Hindsight approach which is not permissible”.
The question that arose in law was “whether the invention claimed in the subject patent application is no more than a workshop improvement or whether it is a mere application of an old contrivance”.
The Hon’ble Court relied on the said principles as laid down by the EPO guideline which deal with combination vs juxtaposition or aggregation:
“9.5 Combination vs. juxtaposition or aggregation
The invention claimed must normally be considered as a whole. When a claim consists of a ‘combination of features’, it is not correct to argue that the separate features of the combination taken by themselves are known or obvious and that ‘therefore’ the whole subject matter claimed is obvious. However, where the claim is merely an ‘aggregation or juxtaposition of features’ and not a true combination, it is enough to show that the individual features are obvious to prove that the aggregation of features does not involve an inventive step. A set of technical features is regarded as a combination of features if the functional interaction between the features achieves a combined technical effect which is different from, e.g. greater than, the sum of the technical effects of the individual features. In other words, the interactions of the individual features must produce a synergistic effect. If no such synergistic effect exists, there is no more than a mere aggregation of features...”
The Hon’ble Court opined that the application is not a mere addition to a well-known combination, but it has some new features and is an improvement in the method which has brought in greater efficiency. If there is a synergistic combination or a working interrelation which produces a new and improved result, the subject matter is patentable.
Further, the Hon’ble Court noted that the application addresses various disadvantages in the prior art, these factors are also, secondary considerations which tilt the Court to hold that the invention is not a result of a mere combination but involves an inventive step. The Court further held that “Air Purifiers have been known in the art for several years but no other air purifier has been shown to the Court which is close to the subject invention’s construction both in terms of physical construction and effectiveness.”
Therefore, the Court opined that “It is a settled position in law that secondary considerations by themselves may not qualify an invention to become patentable but when a set of old results are combined in a new and profitable manner, a patent can be granted. Lack of inventive step requires a person skilled in the art to be able to ‘jump’ from the existing prior art to the subject invention. There is nothing on record to establish that this ‘jump’ could have been achieved on the priority date, especially because even the controller arrives at the finding of lack of inventive step upon a combination of D1, D2 and D3. The differences between the prior arts & the subject invention lead to a finding of inventive step rather than its absence.”
Furthermore, the Hon’ble Court noted that the corresponding US application has been granted by the USPTO after considering in the IDS of the same documents i.e., D1 – D3 and considered that this fact would also add strength to the Appellant’s case that its innovation is not hit by the prior to art documents i.e., D1, D2 & D3.
In this context, the appeal was decided in favor of the appellant. As a result, the impugned order was set aside, and the patent was directed to proceed for grant.
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