Delhi High Court: In a case wherein an appeal under Section of the (‘Act’) was preferred against the order of the Assistant Controller of Patents and Designs, Indian Patent Office (‘Controller’) in which the grant of patent for “Manufacturing of Decorative Laminates by Inkjet” was refused, a Single Judge Bench of Amit Mahajan, J.* noted that the corresponding patent application had been granted in various jurisdiction including USA, UK, Australia, China, and various countries in Europe. Thus, the Court had set aside the impugned order and directed the Patent Office to grant the patent, subject to completion of necessary formalities.
Background
The appellants filed the national phase application in respect of the PCT Application at the Indian Patent Office titled ‘MANUFACTURING OF DECORATIVE LAMINATES BY INKJET’ in 2016. The Patent Office issued a First Examination Report (‘FER’) in 2019 in terms of which, objections under Sections , , and of the were raised. The appellants filed a detailed response along with an amended set of claims, but the impugned order was passed by the Patent Office rejecting the subject application. The grounds for refusal were:
The amended claims failed to meet the requirements under Sections and of the as they were vague, and the scope of claims was indefinite.
The amended claims were not patentable in terms of Section 2(1)(ja) of the Act.
Analysis, Law, and Decision
The Court noted that the Controller had held that the subject patent application was violating Sections and of the as the claims of the subject patent application were not clear and succinct and the scope for protection of the invention had not been clearly defined. The Court further noted that the Controller had held that some expressions/terms like ‘thermosetting resin’, ‘ink acceptance layer’, ‘inorganic pigment’ and ‘polymeric binder’, which had been used in the subject patent application were vague and did not have a definitive boundary.
Objection on Lack of Clarity
The Court noted that with respect to the ‘ink acceptance layer’, it must be noted that, in the laminate manufacturing industry, the said layer was given different references, which included ‘ink receiving layer’ and ‘ink coating layer’ and in the subject patent application, the ‘ink acceptance layer’ had been given a definitive dry weight between 3 g/m2 and 6 g/m2 in the Claims. The Court further noted that the terms of the patent claims (‘thermosetting resin’, ‘an ink acceptance layer’, ‘inorganic pigment’, ‘polymeric binder’) that had been held to be vague, had been sufficiently described in the description of the complete specification. Further, even preferred embodiments for the said terms or expressions were given. Therefore, the Court opined that the aforesaid expressions/terms had been adequately explained. The Court observed that the impugned order failed to consider that the patent’s specification was addressed to a person skilled in the art to whom the aforesaid terms of the Claims would be quite clear in any case. Thus, the Court opined that it did not find merit in the objection on lack of clarity or that the Claims were indefinite.
Objection on Lack of Succinctness
The Court observed that there was no specific reasoning given by the Controller for the lack of succinctness in the Claims. The Court further observed that even the Manual of Patent Office Practice and Procedure, dated 26-11-2019, issued by the Office of the Controller General of Patents, Designs and Trademarks did not give any guidance on what constituted succinctness or how to identify lack of succinctness. Therefore, in the absence of definite guidance for ascertaining succinctness, in the said Manual, this Court referred to the Patent Manual of Practice and Procedure issued by the IP Office of Australia, which gave guidance that under the following two conditions, the Claims could lack succinctness:
An individual claim was considered unnecessarily lengthy; or
The statement of claims was considered unnecessarily lengthy due to the repetitious nature of the claims.
The Court opined that “in the present case, the first Claim was lengthy but by no means unnecessarily lengthy as it was defining specific features and expressions that were interlinked to each other. Considering that it was the right of the patentee to draft Claims to protect all the aspects and features of the invention sought to be protected, the present set of Claims, could not be said to lack succinctness”.
Objection based on ‘Common General Knowledge’
The Court opined that for the Controller to rely on ‘common general knowledge’ as a ground for refusing a patent application, it was essential to specify the source of the said knowledge. It would be essential that the said source of the ‘common general knowledge’ should be published before the priority date of the patent application. In addition, the fact that a theory, principle, or knowledge had become common knowledge needed to be substantiated by some evidence. The said evidence could be in the form of references to ‘common general knowledge’ textbooks or research articles or standard documents.
The Court noted that in the present case, the Controller had failed to give any source of the common knowledge that had been considered. Therefore, the Court opined that it could not be construed as to what precise element of ‘common general knowledge’ had been considered along with the cited prior art to claim that the combination of the teachings of the prior art and the ‘common general knowledge’ led to a finding of lack of inventive step.
The Court further noted that the corresponding patent application had been granted in various jurisdiction including USA, UK, Australia, China, and various countries in Europe. Thus, the Court had set aside the impugned order and directed the Patent Office to grant the patent, subject to completion of necessary formalities.
The Court opined that “since the number of filings in India were rapidly increasing thus there was an imminent need to update the Manual of Patent Office Practice and Procedure so that the Examiners and Controllers could get better guidance on dealing intricate matters like objections of lack of clarity and succinctness. This would be particularly useful when dealing with complex patents involving Artificial Intelligence systems, machine learning functions, agrochemicals, pharmaceuticals, and manufacturing methods”. Thus, the Court recommended the Office of the Controller General of Patents, Designs and Trademarks to update or revise the Manual for Practice as this would ensure that the that Examiners and Controllers could be better equipped to ascertain aspects like clarity and succinctness of inventions. The Court further opined that it might also be appropriate to give adequate technical and patent analytics training to the Examiners and Controllers.
[AGFA NV v. The Assistant Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 477 of 2022, decided on 2-6-2023]
Advocates who appeared in this case :
For the Appellants: Essenese Obhan, Aparna Kareer, Ayesha Guhathakurta, Advocates;
For the Respondents: Harish Vaidyanathan Shankar, CGSC; Srish Kumar Mishra, Sagar Mehlawat, Alexander Mathai Paikaday, Advocates.
*Judgment authored by: Justice Amit Bansal
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