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In the case of Saint Gobain Glass France vs Assistant Controller of Patents C.A.(COMM.IPD-PAT) 13/2024, the key issue before the Delhi High Court in the appeal against the refusal of a patent was whether the invention lacked novelty and inventive step. The Controller refused the patent on the ground of 'lack of inventive step' as the claimed invention was found to be obvious to a person skilled in the art in view of the cited prior art. The (Respondent) Controller asserted that the combined teachings of the prior art documents clearly disclose the same stack in terms of both positioning and thickness. Once the stack is known, its properties are deemed known as well.
Additionally, the fundamental coating stack and the knowledge regarding the positioning of layers, such as a silver layer sandwiched between an upper dielectric layer and a lower dielectric layer, or a silver layer positioned between a dielectric layer and a blocking layer in various configurations, have long been known and are specifically disclosed in the cited prior art documents. Consequently, it would be obvious to a person skilled in the art to adjust the layer thicknesses to obtain a desired property.
The Controller applied the inventive step test as laid down by the Supreme Court in Bishwanath Prasad Radhey Shyam vs Hindustan Metal Industries [2 SCC 511] and the Division Bench of the Delhi High Court in F. Hoffmann-La Roche Ltd. vs Cipla Ltd [2015 SCC OnLine Del 13619] and found that the present invention lacks inventive step. The objection raised by the Controller was under Step 5 of the five-step test laid down by the Division Bench of this Court in F. Hoffmann-La Roche Ltd vs Cipla Ltd., which states that "Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of inventive ingenuity?" The Controller in this case found that the appellant was unable to demonstrate technical advancement based on the data in the Complete Specification or in the expert affidavit, so as to support non-obviousness under Section 2(1)(ja) of the Patents Act, 1970.
Factual Matrix
The Indian Patent Application No. 201717045317 titled 'Material comprising a stack of thin layers' filed by Saint-Gobain Glass France was refused by the Assistant Controller of Patents and Designs by an order dated January 5 2024. During prosecution of the application on August 20, 2019, a pre-grant opposition was filed by the respondent no.2 under Section 25 of the Act. On December 15, 2023, a hearing was held in the pre-grant opposition as well as under Section 14 of the Act. The Controller, vide order dated January 5, 2024, refused the patent application on the ground that the claims of the subject patent application lack inventive step as required under Section 2(1)(ja) and Section 25(1)(e) of the Act. Saint-Gobain France filed an appeal against this refusal.
Submissions on Behalf of the Appellant
The appellant argued that the Controller erred by failing to appreciate the true technical advancement of the invention and by failing to assess the prior art properly. The appellant contested that the Controller's interpretation of the invention's details or claims was incorrect, as it was based on cherry-picking various constituents from the cited prior art documents, applying hindsight reconstruction, and wrongly arriving at the conclusion that the subject invention lacks an inventive step. The appellant contended that such hindsight reconstruction and mosaicing of prior art was not permissible.
Court's Analysis and Findings
On Assessment of Technical Advance
The Court looked into the three-step test for assessing inventive step in an invention as laid down by the Supreme Court in Novartis AG vs Union of India [ (2013) 6 SCC 1] wherein the Court observed that on a combined reading of clauses (j), (ac) and (ja) of Section 2(1), to qualify as "invention", a product must, therefore, satisfy the following tests:
"(i) It must be "new";
(ii) It must be "capable of being made or used in an industry";
(iii) It must come into being as a result of an invention which has a feature that:
(a) entails technical advance over existing knowledge; or
(b) has an economic significance; and
(c) makes the invention not obvious to a person skilled in the art."
[Emphasis supplied]"
The Court analysed the subject patent application in light of the data provided in the Complete Specification to determine whether the appellant established technical advancement over existing knowledge. Acknowledging the test laid down by the Supreme Court in Novartis AG vs Union of India, the Court observed that it is essential for an invention to either be technically advanced in comparison to the existing knowledge or have economic significance to fulfil the requirement of inventive step under Section 2(1)(ja) and the present case is concerned with the technical advancement of the claimed invention over the prior art.
On the facts of this case, the Court noted that such technical advancement was best demonstrated and could credibly be established through objective comparative experimental data vis-à-vis existing knowledge. The Court referred to the ruling of the High Court of Madras in Ollos Biotech Private Limited vs Omega Ecotech Products India Limited [MANU/TN/1598/2024] wherein the Court allowed a petition for revocation of a patent as the patentee was not able to show the technical advancement of the claimed invention over the prior knowledge. Based on this, the Court found that the appellant failed to provide the data required for showing the technical advancement of the invention as claimed in the subject patent application. The Court further observed that subsequent changes to the target values in the expert affidavit further detracted from the credibility of the claimed technical effects. Accordingly, the Court ruled that no technical advancement over existing knowledge was established.
On Cherry Picking: Mosaic of Prior Art
Speaking on the allegation of cherry picking of prior art by the appellant, the Court observed that when prior arts are interrelated to the field of invention of the subject application and the person skilled in the art is aware of the prior art documents as a whole, identification of relevant aspects from each prior art and combining them would not be considered as mere 'cherry-picking'. The contention of the appellant regarding 'cherry-picking', according to the Court, could not be sustained. The Court further held that this case was not an instance of hindsight mosaicing, but of a legitimate combination of directly related teachings in the same technical field, which a skilled person would naturally consult to solve a similar problem.
Court's Decision
The Court ruled that the Controller correctly analysed the subject patent application in light of the cited prior art documents and the data provided in the Complete Specification and concluded that the subject application did not demonstrate technical advancement over the cited prior art documents. Moreover, the improvement achieved by the claimed invention over the cited prior arts was rightly concluded by the Controller as obvious to the person skilled in the art.
The Court disagreed with the submission made by the appellant that the subject patent ought to be granted since a corresponding patent has been granted in France and ruled that "this contention is untenable as it is no longer res integra that patent rights are territorial in nature. A patent granted in one jurisdiction, such as France, has no bearing or enforceability in India, and does not entitle the applicant to a patent as a matter of right in this country. The Patent regime in every country requires an independent assessment of novelty, inventive step, and industrial applicability in accordance with its own statutory standards." Accordingly, for the reasons discussed above, the Court held that there was no error or infirmity in the finding of the Controller that the subject patent application cannot be granted in terms of Section 2(1)(ja) of the Act. The appeal filed by Saint-Gobain was dismissed.
Takeaways
The presence of technical advance over the cited prior knowledge or art is essential to cross the patent eligibility requirement envisaged under Section 2(1)(ja). The applicant needs to provide the data required under Section 2(1)(ja) of the Act to demonstrate the technical advancement of the claimed invention. When multiple prior arts are considered in inventive step analysis, mosaicing is permissible. A legitimate combination of directly related teachings in the same technical field, which a skilled person would naturally consult to solve a similar problem, is permissible. Last but not least, a patent granted in one jurisdiction, such as France in this case, has no bearing or enforceability in India, and does not entitle the applicant to a patent as a matter of right in India.
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