In a landmark judgement, the Delhi High Court directed de novo consideration (by another controller) of a patent application rejected for flawed reasons. In an appeal arising from the refusal of a patent application relating to 'Vertical Rotary Parking System' filed by Dong Yang PC INC, Delhi High Court at the onset observed that "simplicity is no bar to patentability and even simple changes can introduce discernible and substantive differences, leading to a new invention." This observation was made by the Delhi High Court while hearing the appeal in Dong Yang PC, Inc. vs Controller of Patents and Designs [C.A. (COMM.IPD-PAT) 60/2024]. In this case, the Court gave multiple reasons for setting aside the order of the Controller.
On Applicability of the Bishwanath Prasad Radhey Shyam Ruling
Disagreeing with the Controller on the applicability of the ruling of the Supreme Court in Bishwanath Prasad Radhey Shyam vs Hindustan Metal Industries, (1979) 2 SCC 511, in the present case, the Court observed that:
"The reliance placed by the respondent on the judgment in Bishwanath Prasad Radhey Shyam (supra) is totally misplaced. The said judgment is clearly distinguishable on account of the fact that in the said case it was established that the "patented machine was neither a manner of new manufacture or novel improvement, nor did it involve any inventive step, having regard to what was publicly known or used prior to the date of the patent". In the said case, it had been averred that the method of manufacture described in the patent therein, had been publicly known and in use in various places, long prior to the patent. However, no such factual circumstances exist in the present case, rendering the reliance on the said judgment inapposite."
On Invoking 'Common General Knowledge' to Dismiss Inventive Step
Making a jibe at the invocation of 'common general knowledge' to dismiss the inventive step by the Controller, the Court quipped that "it is substantially flawed, as such assertion of 'common general knowledge' has not been substantiated, rendering the said finding of the Controller, as speculative and unsustainable".
Simplicity No Reason for Refusal of Patent
The Court also observed that simplicity is no bar to patentability and even simple changes can introduce discernible and substantive differences, leading to a new invention. The respondent in this case has failed to give any specific reasons as to how the specific structural optimisation of the male and female portions in the claimed invention did not involve technical expertise, and as to how it was an obvious solution. Thus, refusal of patent application on the ground that the subject invention was a mere workshop modification cannot be held to be tenable.
Age of prior art 'Sure Test' for analysing an inventive step
This ruling added one more flag post with existing other factors [like long felt need, etc] that may be considered while ascertaining the inventive step. Holding that one of the sure tests in analysing the existence of an inventive step would also be the time gap between the prior art document and the invention under consideration, the Court reiterated the ruling of this Court on considering the time gap between the prior art document and the invention under consideration in analysing the existence of inventive step in Avery Dennison Corporation vs Controller of Patents and Designs, where it was held that:
"36. One of the sure tests in analysing the existence of inventive step would also be the time gap between the prior art document and the invention under consideration. If a long time has passed since the prior art was published and a simple change resulted in unpredictable advantages which no one had thought of for a long time, the Court would tilt in favour of holding that the invention is not obvious."
- Terrel on Law of Patents (16th Edition) opines that the age of the prior art and why it was not done before is one of the factors to be considered while deciding on obviousness. The observations made in the judgment Brugger v. Medic-Aid Ltd., [1996] R.P.C. 635 delivered by the UK Patents Court has been cited to substantiate the consideration of this factor. The relevant portion reads: "The fact that a piece of prior art has been available for a long time may indicate, contrary to first impressions, that it was not obvious to make the patented development from it. It is useful to bear in mind in this regard the concept of long felt want. This is a particularly efficient expression. An apparently minor development which meets a long felt want may be shown to be non-obvious because, although the prior art has long been available, the development was not hit upon by others notwithstanding that there was a need for improvement (the "want") and an appreciation of that need (the "felt"). In other words the age of prior art may be an indication that a development from it is not obvious if it can be shown that the circumstances in the relevant trade were such that a failure of the development to appear earlier is surprising."
- In the present case, the distinction between the prior art and the subject patent primarily resides in the shape, position, and engagement with the notch as also with the manner in which the detachment takes place when the fastening happens. The prior art document D2 belongs to this very Applicant, and the subject patent application was filed almost 18 years after the filing of D2. The Complete Specification explains clearly the disadvantages of the prior art and sets out in clear terms the various advantages of the subject invention. The said advantages are logically decipherable while one understands the invention. No other prior art has been cited between the period 1992 till 2010 which has dealt with fasteners in this manner and has even come close to suggesting changes in the prior art fastener stock. If the invention was so obvious, fasteners and fastener stock being products used in bulk in industries, any third party could have made the changes in the prior art to arrive at the subject invention - which obviously has not happened.
- The improvement in the present case between the prior art and the subject invention is clearly decipherable. The same does not lack inventive step. The fact that it was not obvious to a person skilled in the art is clear from the lack of any other prior art document addressing the problems in the prior art and suggesting any solutions close to the invention despite the gap of more than 18 years. D1 and D3 are of a period prior to D2, though, dealing with fastening guns and fasteners. The closest prior art identified is D2 and the subject application discloses a technical advancement in comparison with the closest prior art and the features comprising inventive step are not obvious to a person skilled in the art and therefore, the subject patent application satisfies the test of inventive step." (Emphasis Supplied)
On Rejection of Voluntary Amendment
The Court also questioned the reason given by the Controller to disallow the incorporation of D5 by way of reference and adding a comparative statement distinguishing it from the present invention in the specification. The appellant had voluntarily amended the background of the invention by including a reference to document D-5 as prior art, highlighting the drawbacks of D-5 in comparison to the present invention. In respect of the rejection of the appellant's amendment application the justification given by respondent was that the claim of technical advancement over D-5, which is appellant's own prior art, was raised for the first time in the amendment, whereas, as per the statutory requirement, all material facts, including, any asserted technical advancement, must be disclosed in the complete specification at the time of filing.
The Court also questioned the Controller's refusal of the amendment in the specifications, premised on Section 59 of the Patents Act, as the Court found the Controller had ignored the fact that document D-5 was not cited in the FER, and it was introduced only in the Hearing Notice dated 29th September 2023. Interpreting the provisions pertaining to Amendments under Sections 57 to 59, the Court held that there is no specific bar for amendment to the specifications even at a subsequent stage. Thus, the respondent erred in rejecting the amendment application of the appellant and in not allowing the amendment in the specifications, which were sought at a subsequent stage.
Factual Matrix of the Appeal
The respondent Controller vide the impugned order dated 12th April, 2024, while disregarding the pre-grant opposition based on cited prior document D-1 to D-4, rejected the patent application of the appellant (Dong Yang), citing lack of inventive step in view of the document D-5 and by stating that claimed invention was not an invention as per Section 2(1)(ja) of the Patents Act. Further, the respondent also refused the request for the proposed amendment in the specifications as available under Section 15 of the Patents Act, 1970.
Learned counsel appearing for the appellant submits that even a simple invention, if novel and non-obvious, warrants patent protection. Further, the appellant had voluntarily amended the background of the invention by including a reference to document D-5 as prior art, highlighting the drawbacks of D-5 in comparison to the present invention. However, the Controller erroneously refused to allow the said amendment to the specifications.
Appellant's Argument
The appellant submitted that even after acknowledging that the claimed invention is novel over the prior art document D-5, the respondent has wrongly refused the patent application on the ground that the claimed invention was a mere workshop modification of the cited document D-5.
Respondent's Submissions
Relying upon a judgment of the Supreme Court in the case of Bishwanath Prasad Radhey Shyam vs Hindustan Metal Industries, (1979) 2 SCC 511, the respondent submitted that in this case, the Supreme Court held that mere alterations or predictable variations in a known mechanism do not qualify as inventions. The respondent submitted that teachings of D-5, which is a prior art publication belonging to the appellant itself, are sufficient to establish what would be commonly known to a person skilled in the art. Thus, the refusal of the patent application stands justified, as the claimed subject matter is not inventive and is plainly obvious in view of the prior art document D-5.
In respect of the rejection of the appellant's amendment application the justification given by respondent was that the claim of technical advancement over D-5, which is appellant's own prior art, was raised for the first time in the amendment, whereas, as per the statutory requirement, all material facts, including, any asserted technical advancement, must be disclosed in the complete specification at the time of filing.
Subject Matter of Invention
As per the case put forward by the appellant, the subject invention promotes a smoother and more consistent motion with reduced friction and fewer contact points, which help to significantly reduce the noise levels in the Vertical Rotary Parking System. In the subject invention, the female portions of the suspension chain, shown in cited prior art D-5, were replaced with male portions of the suspension. The comparison between the old Vertical Rotary Parking System (D-5) and the subject invention was placed on record.
Basis of Controller's Order
The subject invention was rejected by the respondent on the grounds that the claimed invention lacks an inventive step and does not demonstrate any technical advancement over the cited prior art document D-5, and that the same was not inventive, being obvious. Further, it was held that the appellant had done only workshop modification in the Vertical Rotary Parking System by interchanging the male portions with female portions of the pull gear and suspension chain.
Court's Analysis and Decision
The Court compared the subject invention with the prior art D5 as given in the respondent order and found that the respondent has rejected the patent application of the appellant on the ground that the claimed invention lacks an inventive step and the distinguishing feature in the claimed invention is limited to the mere reversal of the male and female coupling elements between the suspension chain and the pull gear. A curious perusal of the impugned order by the Court showed that at the time of recording such a finding, the Controller failed to adjudicate as to how the invention did not involve technical advancement.
Additionally, the determination that the claimed invention was merely a workshop modification has not been supported by any authoritative documents, except for the finding that slight changes have been made to the existing patent, i.e., D-5. The Court also questioned the relevance of the reliance placed by the respondent on the judgment in Bishwanath Prasad Radhey Shyam (supra) and observed that it was totally misplaced. The Court observed that the said judgment is clearly distinguishable on account of the fact of that case.
Takeaways
This judgment again provides an insight into the manner in which Controllers should conduct inventive step analysis. Simple invocation of 'common general knowledge' is not sufficient to knock down the inventive step, and it should be properly substantiated. The Court also observed that simplicity is no bar to patentability and even simple changes can introduce discernible and substantive differences, leading to a new invention. The Court also ruled that there exists no specific bar for amendment to the specifications even at a subsequent stage. The Court also observed that the age of prior art may be an indication that a development from it is not obvious. One of the sure tests in analysing the existence of an inventive step would also be the time gap between the prior art document and the invention under consideration.
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