In a notable case involving an appeal under Section 117-A of the Patents Act, 1970, challenging the refusal order issued by the Assistant Controller of Patents and Designs, Indian Patent Office regarding the grant of a patent for “Manufacturing of Decorative Laminates by Inkjet,” a Single Judge Bench led by Amit Mahajan, J., duly acknowledged that the corresponding patent application had already been granted in multiple jurisdictions, including the United States, the United Kingdom, and Australia In light of this, the Court reversed the contested order and directed the Patent Office to proceed with the patent grant, subject to the fulfilment of all requisite formalities.
Background of the case
The appellants submitted the national phase application to the Indian Patent Office in 2016 for the PCT Application titled “MANUFACTURING OF DECORATIVE LAMINATES BY INKJET.” Following that, in 2019, the Patent Office filed a First Examination Report, raising objections under Act Sections 2(1)(j), 2(1)(ja), 10(4), and 10(5). In response, the appellants filed a detailed rebuttal along with an amended set of claims. Despite these efforts, the Patent Office denied the subject’s application via the contested order. The grounds for refusal were based on the assertion that the modified claims did not meet the standards of Sections 10(4)(c) and 10(5) of the Act due to a lack of clarity and an ill-defined scope of claims. Furthermore, the modified claims were declared non-patentable.
As a result of the patent’s successful award in many jurisdictions, the Court’s involvement was appropriate. As a result, the contested order was reversed, and the Patent Office was directed to grant the patent subject to the completion of the necessary formalities.
The Delhi High Court has correctly recognized the critical need to modify the “Manual of Patent Office Practise and Procedure” to provide Examiners and Controllers with better direction when dealing with complex issues involving complex inventions. Given the increasing increase in patent filings within India, an up-to-date version of the aforementioned Manual is essential. Examiners and Controllers must be provided with thorough directions, especially when dealing with the intricacies of AI systems, machine learning functionalities, agrochemicals, pharmaceuticals, and manufacturing procedures. This necessary change must successfully address concerns such as lack of clarity and succinctness, fostering efficiency and assuring optimal adjudication in patent-related matters.
The recent High Court of Delhi decision has underlined the urgent need for changes and comprehensive training for patent examiners to reduce uncertainty surrounding the conditions of patentability. This program attempts to keep agents informed and up to speed on the newest developments and market trends, as demonstrated by the case of AGFA NV & anr. v. The Assistant Controller Of Patents And Designs & anr. The appellants filed an appeal under Section 117A of the Patents Act 1970 against the rejection decision issued by the Assistant Controller of Patents and Designs, Indian Patent Office, Delhi.
Analysis of the Contested Order: Violation of Sections 10(4)(c) and 10(5) of the Act
Following a thorough examination of both parties’ pleadings, the Court reached several key decisions. The Controller determined that the subject patent application violated Sections 10(4)(c) and 10(5) of the Act. This decision was made because the claims in the patent application lacked accuracy, conciseness, and a clearly defined scope for protecting the invention. Furthermore, the Controller identified phrases and expressions in the patent application that were regarded as ambiguous and lacking in decisive boundaries.
Furthermore, the Court found a serious flaw in the assailed order in that it failed to take into account that the patent specification is designed for a person skilled in the relevant art, to whom the contents of the claims would be self-evident. Furthermore, the Court emphasized the importance of the Office of the Controller General of Patents, Designs, and Trademarks’ Manual of Patent Office Practise and Procedure, dated November 26th, 2019, providing clear guidance on the definition of succinctness and how to identify instances of lack of conciseness.
Reversal of the Contested Order: Delhi High Court’s Decision
The Court noted that the Controller had made no specific reference to the source of common information under consideration in this case. As a result, it was hard to discern which specific element of “common general knowledge” had been considered in connection with the referenced previous art to conclude that the combination of these characteristics resulted in a lack of innovative steps. Notably, the equivalent patent application had already been issued in some jurisdictions, including the United States, United Kingdom, Australia, China, and some European countries. As a result, the Court judged it appropriate to vacate the contested ruling and direct the Patent Office to proceed with the patent grant, subject to the completion of all necessary formalities.
Conclusions and Call for Reforms: Urgent Changes in Patent Examination Process
Recognizing the constantly increasing volume of patent filings in India, the Court emphasized the urgent need to update the Patent Office Practise and Procedure Manual. Such an upgrade would give Examiners and Controllers improved direction in dealing with complex issues, such as objections based on a lack of clarity and succinctness. This new guidebook would be especially useful when evaluating complicated patents covering AI systems, machine learning functions, agrochemicals, pharmaceuticals, and manufacturing methods. As a result, the Court advised that the Office of the Controller General of Patents, Designs, and Trademarks revise or update the Manual to ensure that Examiners and Controllers have the tools they need to evaluate the clarity and succinctness of inventions.
Furthermore, the Court urged that Examiners and Controllers receive adequate technical and patent analytics training to further increase their knowledge in patent matters. Given the increasing number of patent filings in India, the Court emphasized the urgent need to update the Manual of Patent Office Practise and Procedure to provide Examiners and Controllers with improved guidance in addressing complex issues such as clarity and brevity objections. Justice Amit Bansal suggested that the Office of the Controller General of Patents, Designs, and Trademarks revise or update the Manual to improve Examiners’ and Controllers’ abilities to analyse the clarity and conciseness of inventions.
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