87 judgments of the Delhi High Court, the Calcutta High Court and 1 other court applying Patents Act s.2(1)(ja), from 2023–2026, each with a headnote by BRB Legal.
Refusal of a polymorph application set aside and remanded, with a clear finding on section 3(d). The monohydrate crystalline polymorph keeps the fungicide Benzovindiflupyr stable between 50 and 60 degrees Celsius so that it does not crystallise into lumps that clog spraying machinery, making it usable in regions where temperatures exceed 40 degrees. The Court held that this is a reasonable enhancement of efficacy satisfying section 3(d), and that the absence of enhanced therapeutic efficacy is not a bar where the product is not a medicine. The order was separately vitiated by the Patent Office omitting the data the applicant had submitted without sufficient reasoning, and relying on existing knowledge without citing any source.
Refusal set aside and remanded for de novo consideration of the inventive step objection. The Court held that the scope of claim 1 was determinable by reading it with the dependent claims, the description and the drawings, so the objection under section 10(5) did not hold. The unreasoned finding that claim 1 lacked technical advancement over D1 and D2 required fresh analysis applying the five step obviousness test in F. Hoffmann-La Roche v. Cipla, recently reaffirmed in Tapas Chatterjee.
Division Bench declined to interfere with the refusal of an interim injunction over Risdiplam. A defendant resisting injunction need only raise a credible challenge to validity under section 107 read with section 64, and is not required to make out a cast iron case; where the Single Judge finds such a challenge established, an appellate court should step back unless the challenge is not credible or incorrect principles were applied, following Wander. The Bench held the Single Judge had correctly found the species patent prima facie obvious over the genus patent on four grounds: four lead inventors were common to both; the genus patent provided for various fused ring heterocycles with nitrogen placed at different positions in the same ring; the imidazo[1,2-b]pyridazinyl substitution was specifically disclosed; and N and CH fall in the same vertical column under Grimm's Hydride Displacement Law.
Appeal dismissed, the application for a method of detecting single nucleotide variants from blood samples being held to fall within the exclusion for diagnostic methods under section 3(i). Having so held, the Court expressly declined to go into the Patent Office's views on inventive step or section 59. It added that whether such an embargo ought to exist in order to enable innovation in biotechnology is a question of policy beyond its remit.
Two appeals dismissed on section 3(i). The Court held that the fact a method is performed in vitro does not by itself make it patentable so long as the purpose of the process is to diagnose a medical condition: here the method of methylation of samples drawn from a pregnant woman produced a result sufficient to eliminate her from further testing, which brought it within the exclusion. Grants of the same invention in foreign jurisdictions could not displace the statutory prohibition in India. As the second application differed from the first only in the polynucleotide sequences, the analysis in the first bound the appellants in both.
Letters Patent Appeal allowed in part in a pre-grant opposition over a process for recovering potassium sulphate from distillery spent wash. The Division Bench rejected the opponent's objection that the process was unpatentable under section 3(d), and remanded only the objection under section 25(1)(e) read with section 2(1)(ja), confined to the prior art the opponent had already cited.
Writ allowed and a refusal based on pre-grant opposition set aside, on a point of procedure that recurs in opposition practice. Where the objections raised in the First Examination Report differ from those in the representation under section 25(1), the Controller is obliged to hold two separate hearings, one on the pre-grant opposition and one on the application under examination, and to pass separate orders dealing with each. The Court also held that the Controller erred in failing to consider the applicant's expert affidavit and technical evidence, and that conducting an independent scientific analysis without giving the applicant an opportunity to address it was a serious infirmity and a breach of natural justice.
Appeal dismissed and a refusal for want of inventive step upheld, which makes this a useful counterweight to the many appeals in which refusals are set aside. The Court held that the Controller had rightly analysed the application against the cited prior art and the data in the complete specification, and had rightly concluded that the claimed improvement was obvious to the person skilled in the art and showed no technical advancement. It rejected the argument that a corresponding grant in France entitled the applicant to a patent here, holding that patent rights are territorial, that every regime requires an independent assessment of novelty, inventive step and industrial application against its own standards, and that even the notional person skilled in the art differs between jurisdictions.
Refusal of a vertical rotary parking system application set aside and remanded. The judgment is useful on post-filing evidence of unexpected results: where there is already support in the specification showing that the inventor contemplated the unexpected result at the time of filing, it is not improper to supplement that with evidence obtained later, since understanding of the full range of an invention is not always achieved when the application is filed. The Court also held that reliance on Bishwanath Prasad was misplaced, that case having turned on a finding that the patented machine was neither a new manufacture nor a novel improvement and had been publicly known and used before the patent, circumstances absent here.
Appeal dismissed and a refusal under section 3(k) upheld, which makes this a useful counterpoint to the computer-related inventions that have succeeded. The claimed invention merely enabled a keyword search within a peer-to-peer network, which the Court held reflects conventional computer programme behaviour and does not enhance the functionality of the hardware, while the profiling aspect using keyword lists to locate particular types of user or data was abstract and lacked technical character. Claims 1 to 7 were therefore a computer programme per se and claims 8 to 10 algorithms. The Court applied the reasoning in Blackberry, distinguished Lava and Microsoft, and declined to examine the separate objection under section 2(1)(j) having upheld the refusal under section 3(k).
Appeal dismissed and refusal of a divisional application for an intermediate compound upheld. The Court held it obvious for a person skilled in the art to replace ethoxy with methoxy to provide alternative intermediates useful in synthesising aminothiazole derivatives, both being lower alkyl, and noted that the prior art documents and the subject application lay in the same field and shared a common inventor, which it treated as of much relevance. On the law, it held that an inventive step under section 2(1)(ja) must be more than a variety or an add-on variation and must lie beyond what is known to a person in the relevant field, so a trivial run-of-the-mill improvement or modification reflecting no creativity is not an inventive step.
Refusal set aside and remanded. The Controller had noted but given no reasons for rejecting the applicant's contention that the nucleotide sequences were synthesised, and had inferred from the absence of conjugated detectable labels on two of the claimed primer sequences that they must have been discovered or taken from a natural source and so were excluded by section 3(c). The Court held that this conclusion warranted re-examination.
The hearing notice relied on three cited documents and the order relied on only one of them, with no reasons given for how even that one applied to the claimed invention. The Patent Office being a quasi-judicial authority must adhere to the principles of natural justice and give proper reasons for refusing a patent. Set aside as a non-speaking order passed by total non-application of mind.
A refusal for want of inventive step was quashed as a non-speaking order. The Controller said only that three of the five cited documents were found relevant to the claimed subject matter, without a word on why they applied, and his account of the other two reproduced the applicant's own amended claims almost verbatim. The delay was a separate and compelling ground: the hearing concluded in September 2022 and the order issued in February 2024.
Refusal for lack of novelty and inventive step set aside on both grounds. On novelty a feature-by-feature comparison showed the cited document disclosed neither the depressed cladding, nor its refractive index being lower than that of the outer cladding, nor the presence of both dopants in the core and the depressed cladding alike, nor the control of dopant concentration so as to give a continuous variation and a continuous derivative with respect to fibre radius; the cited document therefore failed to disclose all the features of the claimed invention. On inventive step the order gave no reasons at all, merely referring back to the hearing notice, with no independent analysis. Following Agriboard International, in rejecting an invention for lack of inventive step the Controller must consider three elements: the invention disclosed in the prior art, the invention disclosed in the application, and the manner in which the claimed invention would be obvious to the person skilled in the art. Without a discussion of those three a bare conclusion is impermissible, since section 2(1)(ja) itself requires the Controller to analyse what the existing knowledge is and how the skilled person would move from it to the claimed invention.
Refusal under sections 2(1)(ja) and 3(d) quashed as a non-speaking order. The Controller ignored the gap between the amended claims and the prior art, never considered the written submissions, the responses to the objections or the amended claims, and gave no reason for concluding that the core structure of the claimed compound was the same as that of the cited document, which on a prima facie view disclosed a different core. On Novartis, the test of efficacy for a medicine claiming to cure a disease can only be therapeutic efficacy, but the order said nothing about why the claimed invention failed that test. Following Avery Dennison, a significant technical advancement suffices to satisfy inventive step, and following BlackBerry, a Controller cannot refuse by merely reproducing the objections raised in the First Examination Report.
Refusal of a regenerative braking application set aside, in part. On inventive step the Controller failed to examine the claim on what the applicant actually said distinguished it, that the user selects one of more than one regenerative mode and that the selection is the trigger for the process to operate after reckoning specific vehicle parameters, the cited document disclosing a regenerative and a reverse mode but no high and low regenerative mode. No reasons were recorded for the conclusion that the invention would be obvious to the skilled person. On sufficiency the Court found the Controller had overlooked that one predefined value was specified in a dependent claim and that a fault condition would be indicated by the system itself, but accepted that certain other predefined values did not appear in the complete specification, leaving that to be reconsidered on remand.
Refusal of an absorbable iron-based alloy implant application set aside for want of a recognised inventive step methodology. The Court took the five-step test laid down by the Division Bench in Hoffmann-La Roche v. Cipla, which the Manual of Patent Office Practice and Procedure, 2019 itself reiterates, and walked the impugned order through each step. The Controller referred to the person skilled in the art repeatedly but never identified who that person was; correctly identified the inventive concept and the differences from the prior art; but at the final step assumed that substituting zinc was predictable without probing whether the specific configuration claimed produced a non-obvious technical advantage or unexpected result. The order therefore lacked proper methodology and sufficient scientific reasoning and gave a scattered analysis. An order of the Controller must be scientifically reasoned, application of mind and a recorded reasoned decision being basic elements of natural justice.
Refusal of a long-chain inulin application set aside and the appellant held entitled to grant. The Controller had treated the invention as a mere isolation of naturally occurring inulin from artichoke. The Court held that the novelty claimed lay in fractionalising inulin to achieve a higher molecular weight and a specific chain length profile within a defined range, demonstrated by a comparative table, and not in isolation alone. Against the second prior art the invention showed better solubility, slow fermentation, a stronger prebiotic effect and high gel strengths, none of which that art exhibited, and the Controller had rejected these on mere surmise. The Court added that hindsight construction is impermissible, that mere structural similarity is not enough because a minute change can produce unpredicted results, and that where the same prior art had been considered before grants in the United States, Australia and Europe, the Controller was at least expected to distinguish those grants.
Refusal for want of inventive step set aside. On the solution-to-a-problem rule in Avery Dennison, where a problem is identified and an invention supplies a solution the prior art had not supplied, that is an inventive step, and the Controller never tested the invention on that footing. He also maintained an objection founded on a document the applicant had repeatedly shown to be irrelevant, without ever explaining how it remained relevant in the face of that explanation.
A remand on a narrow point, and expressly not on the ground that the order was unreasoned. The Controller held that peening of the heat affected zone was obvious from the cited document, but the independent claim and the specification were directed at peening beyond the boundary of stress concentration, which the cited document nowhere expressly addressed. Because the order stopped at the heat affected zone, the Court declined to decide whether peening beyond the stress affected area is a technical advance or non-obvious, and left that to the remand.
Refusal of a biomass hydrolysis process set aside outright. Going through each cited document, the Court found that none taught the key feature, that the hydrolysed species of the feedstock itself acts as the solvent for fresh feedstock, and that one taught away from it. On sufficiency it held, following FDC v. Sanjeev Khandelwal, that section 10(4) requires the specification to describe the invention fully and particularly and to disclose the best method, but does not require the claims to be representative of the best method; following Tata Global Beverages, that examples need not be given across the entire range claimed; and following Farbwerke Hoechst, that processes forming part of common general knowledge need not be described, the specification being addressed to those with a high degree of knowledge in the field. Disclosure of at least one way of working the invention suffices. On section 10(5) it is enough that the claims are fairly, not exactly, based on the description. On section 3(d), following Natco Pharma, where the solution itself was not known before the invention it cannot be the mere use of a known process; the could-would approach asks not whether the skilled person could have carried out the invention but whether he would have done so expecting to solve the problem or gain an advantage; and on Gandhimathi Appliances a combination of known integers showing a new use is patentable where the claimant was first to visualise it. The same prior art had been cited and overcome in the European application, and the invention stood granted in 23 jurisdictions.
A section 3(d) refusal of a crystal form of a prodrug was set aside. The Controller treated lanosterol as the known substance without explaining how he had got there, when the claims were to a crystal form of the lanosterol prodrug; and he dismissed the specification's data as going only to stability, permeability and bioavailability without appreciating that the experimental examples relied on were pharmacodynamic studies, which go to the effect of the drug on the body rather than the effect of the body on the drug.
A section 3(k) refusal was set aside for applying the discarded novel hardware test: the claims were rejected because the only hardware disclosed was a general purpose processor, memory and computing device, without applying the settled requirement of a specific and credible technical effect beyond ordinary computing. The algorithm ground was taken without any opportunity to respond, and the inventive step finding was an extract of the prior art followed by a conclusion.
Both grounds fell on the same defect, that the order did not acknowledge what had actually been filed. The written submissions set out comparative data against four cited documents to show technical advancement, yet the order recorded that the applicant had failed to establish any, which was contrary to the record. On section 3(e) the Controller never engaged the foundation of the claim, a tablet that dissolves because it carries no enteric coating, giving higher concentration without losing late release.
A device claim is not caught by section 3(k) merely because the device uses a computer program to process and display data. The claim was to a parameter display system fitted in a working vehicle, recording data to memory and displaying it, and the application lay in mechanical engineering rather than in computing or mathematics. The same invention had been granted in Japan under a classification for engine controls, which the Controller never considered.
A refusal for want of inventive step was remitted on three defects. The order invoked common general knowledge in the art without identifying its source or explaining how it rendered the claim obvious. It found that the skilled person would be easily inspired by the combined teachings of six cited documents, with no discussion of the claim against any of them. And it made no reference at all to the patents granted abroad on the same invention over most of the same prior art.
Refusal set aside as a non-speaking order on every limb. Proof of right was rejected without any discussion. The amended claims were disallowed under sections 57 and 59 with no reason given, although they factually narrowed the original claim. And the conclusion that the invention was obvious was reached by merely extracting the prior art documents, without any discussion of how that conclusion followed. The applicant's written submissions were not objectively considered.
Dissecting a combination into its constituent elements and asking whether each was obvious is impermissible, because it obscures the fact that what is claimed is the combination. The real and ultimate question is whether the combination is obvious. The order also speculated on common general knowledge without stating or discussing its source, and never engaged the written submissions filed more than a year before it issued.
The order relied on it being routine knowledge in synthetic organic chemistry to explore linear and branched chains, without ever defining what was routine, and said that some of the claimed compounds were described in the cited document without identifying which. A comparison chart distinguishing the claimed structure from both cited documents, and the point that one of them concerned a different field, went unanswered.
The prior arts were discussed but never in a manner distinguishing the claimed invention, the written submissions setting out those distinctions were not considered, and the US and European patents granted for the same invention went unexamined. The Controller held the applicant's explanation misinterpreted without saying how it was misinterpreted.
A one-page order described the two cited documents and the hearing notice and then concluded that the invention lacked an inventive step, with no explanation of how the claimed invention had been tested against the settled legal position. The written submissions had set out in detail why the cited art did not lead to the invention, and the patents already granted in the United States and in Europe were not considered.
Refusal of a product claim to an orally, rapidly disintegrating tablet for want of inventive step set aside, with the objection under section 3(e) remitted. The applicant had already been granted a patent on a co-pending application for the process of preparing the tablet. The Court held that having granted the process patent the Controller was estopped from reopening that process, finding it no different from the prior art, and so refusing the product: product patents and process patents are different, and obtaining one does not bar an application for the other, though a process patentee cannot claim monopoly over the product or stop another arriving at it by a different process. The finding that coated tablets of the compound were well known to the skilled person was made without citing any document, and the reasons the applicant had given on the cited prior art were never discussed. On section 3(e) the Controller held the objection unmet without discussing the explanations at all.
Appeal against refusal of a patent for a lamp made from a panchagavya-based composition dismissed, the claimed invention being both excluded under section 3(p) and obvious. On obviousness the Court held that the question is not whether there are differences between the cited prior art and the claimed invention but whether the invention would be obvious to the person skilled in the art, to whom knowledge of the cited prior art and common general knowledge is imputed. Prior art D1 alone disclosed no coherent thread leading to the invention, but D3 disclosed lamps made from cow dung, ghee and essential oils, and on Genentech v. Hospira, where the general conditions of a claim are disclosed in the prior art it is not inventive to discover optimum or workable ranges by routine experimentation. Once the ingredients are traditional knowledge, working out proportions is routine. A test report was given no weight because the samples had not been collected by the testing house, and in any event the reduced carbon footprint was incidental to known properties of the ingredients. Sections 29(2) and 31(d) did not assist, both going to anticipation rather than obviousness.
Refusal set aside and the application for a system associating command services with multiple active components directed to proceed to grant on amended claims. Applying the Windsurfing and Pozzoli steps, the Court first held the newly cited prior art to be non-analogous. On the remaining art, D1 described a commanding system in which input flows inward from input devices through commanding nodes and tables of bindings to a command handler, whereas the claimed invention dispersed commands outward from a single shared command surface to different unrelated applications through their components. Although both systems handle multiple inputs or commands, their mode of operation differed markedly, and it would not be obvious to a person skilled in the art armed with D1 to arrive at a shared command surface serving unrelated applications.
A cryptic decision with no discussion at all of how the invention was obvious over any of the cited documents. The Form 3 statement had disclosed a United States grant made after that office considered one of those very documents, which went unmentioned, and the synergistic effect demonstrated in the written submissions was neither considered nor discussed.
Four prior arts were cited and none was discussed with specific reference to the method claimed. The finding that no purity data had been provided was wrong, the data having been filed as a tabular column with the written submissions, and the finding that claim 1 lacked technical disclosure of the method steps was wrong too, the steps being set out in the claim as filed.
The claims were held obvious in the light of two cited documents and common general knowledge. The Controller gave no source for that common general knowledge and assigned no independent reasons for the conclusion. A finding reached that way is improper and cannot be sustained.
The order held the invention to lack an inventive step without discussing the cited document at all, and concluded that both section 2(1)(ja) and section 3(k) stood in the way of grant without any reasons substantiating that decision. The applicant was given liberty on remand to put further submissions beyond those already before the Controller.
Appeal dismissed, but on only two of the three grounds of refusal. The rejection under section 3(a) as frivolous was held untenable, that ground having been raised for the first time in the impugned order and in neither the First Examination Report nor the hearing notice. The rejection on industrial applicability was also untenable: the filter requires only that the claimed invention be capable of being put to practical use, not that it be cheaper than the prior art, so the objection that replacing the filtration material is expensive went to economic significance rather than industrial applicability. On inventive step the refusal was sustained. Section 2(1)(ja) requires both a technical advance over existing knowledge or economic significance, and non-obviousness to the person skilled in the art. Applying the Windsurfing and Pozzoli steps, with the caveat from Rhodia that the skilled person is of above average skill and normal imagination but lacks ingenuity, the Court identified a chemical engineer working in composite solid propellants, and held that selecting among known filtering materials was obvious from the prior art and common general knowledge, while limiting exposure time to reach the ideal doping percentage was routine experimentation. Without comparative cost data, economic significance was not established either.
One of the few refusals upheld on the merits, and useful for that reason. The Court worked through claim construction, the cited art, the person skilled in the art, the motivation to combine and common general knowledge before concluding that moving a comprehensive vehicle monitoring system from a fixed installation to a portable one was a natural and expected progression rather than a leap. Motivation to combine was found in recognised industry needs apparent from the documents themselves. Common general knowledge was established by named consumer products with their first listing dates on a retail site before the priority date, which is a practical route to proving it. The Court expressly identified and guarded against hindsight bias and still found the path obvious, and noted that no economic benefit of the combination had been set out in the application.
Refusal set aside and the application for a method of detecting inclusions in diamonds directed to proceed to grant, subject to amendment of claim 1 and deletion of claim 4. On obviousness, the Controller had reasoned with hindsight: there was no discernible link between the two groups of prior art, the document relied on as a bridge taught away, and the notional team would not have combined them. On section 3(d), the second limb excludes claims to a new use of a known substance, and a method claim that immerses a diamond in molten selenium is not a monopoly claim over selenium, so the exclusion did not apply. A request to narrow substantially comprising selenium to consisting of selenium could not be refused for delay once inventive step was established. Claim 4 was rejected as insufficiently enabled.
The appeal was dismissed with costs of one lakh rupees. The appellant told the Court that the corresponding European application had been abandoned when in fact the European Patent Office had refused it for want of novelty and inventive step, and had refused a divisional of it as well. Presenting wrong facts and failing to disclose both refusals was held to be a failure to comply with the disclosure requirements of the Act. The judgment is also the fullest collection in the digest of the tests for inventive step: obvious to try, problem and solution, could-would, teaching-suggestion-motivation which is not to be applied narrowly, the four Windsurfing steps, Pozzoli as modified by Jacob LJ, and the five-step test of the Division Bench in F. Hoffmann-La Roche. None of them is to be applied in a straitjacketed manner, and more than one may be combined.
Refusal of a markush claim to IAP inhibitors under sections 2(1)(ja) and 3(d) set aside. The Court held the Controller's finding that nobody skilled in the field would have any motivation to select the claimed moiety from the innumerable possibilities listed in the prior art was farfetched: the Controller is not required to predict whether a skilled person would ever select a particular moiety, only to examine whether the claims are patentable.
An order of twenty-six pages was a reproduction of the claims and, in the Court's phrase, a travelogue of the journey through five cited documents. The Controller rested on an aspect of the invention said to carry certain technical features found in two of them, but never explained how. Unusually, the remand was to the same Controller, for a hearing confined to the objection raised in the hearing notice.
Refusal of an anti-CD38 antibody application set aside. On section 3(c) the Court held that the claims could not be treated as the discovery of a non-living substance occurring in nature merely because the organism specified in the sequence listing was homo sapiens; that conclusion would be justified only if the appellant had found a hitherto unknown antibody and isolated it from nature, whereas the antibody here was developed on a transgenic mouse platform and the annotation recorded the most homologous organism. On inventive step the Court found no basis for the conclusion that the invention lacked technical advancement, the appellant having shown structurally novel CDR sequences and functional advances in cytotoxicity and tumour inhibition supported by expert affidavits, and the cited prior art having been before the ISA, the EPO and the USPTO.
Grant directed on the amended claims after the Court ran the obviousness analysis itself. One cited document was directed at analysing bio-process fluids, was not analogous art and could be safely disregarded. A second addressed sector-based redundancy to repair defective memory columns and never mentioned corruption by gamma radiation, so it answered a different problem. Critically, the analogous document taught away: it disclosed that flash EEPROM, DRAM and SRAM corrupt in a gamma environment because they hold data as stored charge, so a person working from it would not turn to a document built on flash EEPROM cells. The redundancy in the two inventions was different in kind, one writing the same material across several regions so that uncorrupted copies survive, the other adding spare cells per sector. Though both the memory type and redundancy were known, the combination for RFID tags surviving 25 to 50 kGray was not obvious without hindsight.
Two of the documents relied on had come into existence after the application for grant was filed, so they were not prior art at all, a fact the applicant had not realised when filing its written submissions. The Controller had also confined her objections to two named claims and then rejected the application without considering the rest.
The hearing notice cited a fresh set of four prior arts, not one of which had been cited in the First Examination Report. The order then copy-pasted those objections and gave no opinion on the explanations offered in the written submissions. The rule of fairness requires the order to show that those explanations were fairly considered and discussed.
Once the Controller gave up the three documents cited in his examination report, citing none at all in the hearing notice, there was nothing left to support a finding that the invention lacked an inventive step, and yet the finding was made. He also held that an amendment went beyond the original specification without explaining how, having allowed that amendment.
Refusal set aside and the application for message communication of sensor data directed to proceed to grant on amended claims. The Court examined what problem the cited prior art set out to solve and found it was data management, filtering sensor data and publishing it to a subscribing application only when a pre-set event of interest occurred. The claimed invention addressed a different problem, the complexity of communicating sensor data to subscribing applications, by transmitting it in a form easy to process. Since the prior art did not suggest or motivate, much less teach, that solution, arriving at the claimed invention required ingenuity rather than mere skill in the art. The Court nevertheless held that the claims as framed were too wide and set out the narrower wording required.
Where the Controller has accepted over the course of three examination reports that the invention is novel, it is not self-evident how the skilled person would nonetheless find it obvious, and the order has to explain that. The claimed collapsible spacer worked on a different concept from the two cited documents, one of which was the applicant's own earlier patent.
Refusal set aside where the Controller had cited the applicants' own earlier, withdrawn application as prior art D1 under section 13(1)(b). The earlier application had been withdrawn well within the period allowed by section 11A(3)(c) read with Rule 24, so it should never have been published at all, and the later filing of Forms 9 and 18A for it was both out of time and incapable of reviving a withdrawn application. The Patent Office ought to have sought clarification as to which application was to be processed. Applying actus curiae neminem gravabit, which binds every statutory authority deciding the rights of a citizen, an innocent party cannot suffer for the error of a quasi-judicial body, so the publication and citation of D1 were invalid and the novelty and inventive step objections founded on it could not stand. On section 3(k) the invention combined hardware and software with a visible technical advancement under the 2017 Guidelines for Examination of Computer Related Inventions, so the objection did not apply. Remaining objections as to clarity and breadth were formal and curable.
Refusal under sections 2(1)(ja), 3(k), 10(4) and 59 set aside on all four grounds. Section 3(k) appeared for the first time in the order itself, never in the First Examination Report or the hearing notice, so the applicant had no opportunity to meet it. The cited prior art addressed different problems, and the final amendment filed with the written submissions had already taken the claims outside section 59.
A hearing notice issued roughly a fortnight before the hearing introduced a fourth cited document and directed that the three already cited be read along with it, leaving the applicant no real time to respond concretely. The order was then too cryptic to disclose any line of reasoning, with no discussion from which the Court could tell which of the cited documents was said to render the invention obvious.
The hearing notice gave the three cited documents a go-by and raised a new ground questioning structural novelty in the hardware. The order then ignored the amended claims, ignored the Controller's own hearing notice, and went back to the three documents he had given up, reviving them without notice and taking the applicant by surprise.
Both grounds of refusal failed. On inventive step the Controller merely extracted the cited documents without considering the explanations offered in reply to the First Examination Report or at the hearing. On section 59 he set 'the use of a lubricated polyamide for the preparation of articles by injection moulding' against 'a method of preparing an article comprising injection moulding the article using a lubricated polyamide' and held that 'method' expanded the scope of 'use'. Section 59 is not a tool for misreading an applicant's language; the comparison is of substance.
The appellant filed amended claims along with the appeal and asked only that the Controller apply his mind to them. The matter went back for that purpose, to a different officer, the application dating from 2011 and the Court asking for disposal as expeditiously as possible.
A refusal under section 3(b) for likely harm to animals was set aside where the specification showed the enzyme process was for the beamhouse or wet treatment of hides and skins in tanneries, that is on dead animals, even though it did not say so in explicit terms. The applicant was given liberty to amend to make that clear. On inventive step the Controller relied on one of four tables put forward and cherry-picked parts of another.
The Controller held that embossing is a general technique, but the claim was not to embossing as a technique; it was to the use of embossing to produce a single moulded screen and deflector in place of one bolted together. One cited document described the bolted arrangement the invention improved on and the other concerned cloth dryers. The explanations and written submissions went unanswered.
Appeal dismissed and the refusal of a patent for polyamide materials with high fluid barrier properties affirmed. D5 described a multilayer structure using polyamide or a polyamide and polyolefin mixture as an optional barrier layer and did not teach away from it. D6 not only taught the use of novolac resin but demonstrated the benefit of combining it with a polyamide, its own table showing that the comparative example without novolac had a fluid permeation rate 31.5 times greater. Armed with both, a non-inventive person skilled in the art looking to solve the permeability problem would combine the elements of D5 with novolac resin, and arriving at the claimed invention would be a matter of routine experimentation. The Court was fortified by there being few options in engineering plastics and no need for more expensive high performance polymers.
The refusal engaged only the first cited document. On the inventive step the appellant had actually claimed, the order hardly made a whisper. Addressing one prior art while passing over the explanations offered against it is not a finding on inventive step under section 2(1)(ja).
The only reasoning in the order was that the applicant's data related to a different compound from the one claimed. That was factually wrong: the same table contained an entry for the claimed compound, which the Controller had passed over while considering the other entries in it. The error vitiated the order.
Appeal partly allowed. On obviousness the Court held that the order gave no reason why a person skilled in the art would pick one compound out of more than a hundred in the cited prior art and add a methyl substituent to arrive at the claimed compound, particularly when several other compounds in that document had lower IC50 values, and that without hindsight it did not appear possible. The order had also brushed aside the other claimed technical advancements without reasons. On section 3(d) the Court held that since the parent compound was not a known substance, its polymorphic forms could not be treated as obvious and section 3(d) did not apply, so enhanced efficacy need not be shown; the x-ray diffraction pattern identifies a polymorph rather than being a technical advancement. The composition claim failed section 3(e) because no synergy between the ingredients had been asserted or demonstrated.
Refusal set aside on both grounds and the application remanded. On inventive step the order had listed features said to be common to two prior art documents and the independent claim and then concluded that combining their teachings would be obvious, without cogent reasons, and without taking into account that the European Patent Office had granted a patent on the same prior art. The Court held that a foreign grant on the same art, while neither conclusive nor dispositive, is a material consideration. On section 3(k) the order had recorded that the claims involve no technical contribution and are merely a computer programme stored in the memory of a general purpose computer, again without reasoning and without engaging with the CRI guidelines or with Ferid Allani and the Delhi Microsoft judgment on the meaning of the words per se.
The operative portion of the order was extracts from three cited documents followed by two conclusions that the skilled person would be able to combine their teachings. No attempt was made to engage with the reply to the examination report or with the oral and written submissions, so the order recorded conclusions with no reasons in support and could not stand.
An order running to some thirty pages was almost entirely extracts from ten cited documents, and its operative portion combined them by lifting phrases in order to conclude that the invention was obvious. Counsel handed up a marked-up copy of that operative portion showing which words had been taken from which document. The order was bereft of reasoning and could not be sustained.
Divisional application refused as not relating to a distinct invention compared with the allowed claims of the parent, and so illegitimate ab initio, with a further finding of lack of inventive step. Set aside because the section 16 objection appeared in neither the First Examination Report nor the hearing notice. To the Registry's answer that it is common practice to raise new objections during the hearing and then allow the applicant to respond, the Court held that such a procedure is not sustainable in law: objections must be restricted to those given to the applicant in writing, whether in the First Examination Report or the hearing notice, and if additional objections arise during the hearing the Patent Office must at the very least set them out in writing and give the applicant an opportunity to respond in writing.
Three grounds of refusal, each answered on the record. The paragraphs of the specification setting out the process were never referred to, the claim itself gave the numerical range said to be missing, and the obviousness conclusion was drawn with no reference to any prior art at all. Where a range seems too wide or a term undefined, the Controller can call for an amendment.
A refusal for want of inventive step was set aside for recording a conclusion on the cited art without engaging the applicant's answer to it. Two observations were directed to be taken into account on remand: that more than four decades separated the cited documents from the priority date, which is not decisive of non-obviousness but is a relevant consideration; and that a grant elsewhere on the same prior art is material though non-determinative, the requirement of non-obviousness being substantially the same across jurisdictions.
Refusal set aside and the application remanded. On section 59 the Controller had concluded that the amendments were not allowable because they were nowhere disclosed in the pre-amendment claims, without giving reasons. Examining the claims itself, the Court found that the amended independent claim combined elements of several original claims and so fell wholly within their scope, and that the other amended claims corresponded to original claims, so the requirements of section 59 were met even on the stricter reading of its limbs. On inventive step the Controller had reproduced passages from the prior art and recorded a conclusion without examining the appellant's extensive reasons in reply to the First Examination Report and in written submissions.
An order which could not be called unreasoned was still set aside, because the Controller never engaged with the specific submissions distinguishing each cited document and gave no reasons for rejecting them. Where the same prior art had been cited in other jurisdictions and the invention held inventive there, cogent and sufficient reasons should have been provided before refusing.
Refusal under section 3(k) and for want of inventive step set aside because the Controller applied the superseded 2016 Computer Related Inventions Guidelines instead of the Revised Guidelines of 2017. The requirement of novel hardware existed only in the 2016 Guidelines and is a higher standard with no basis in law. The correct question is whether the invention makes a technical contribution or produces a technical effect, here whether the system reduces the time taken to schedule job execution in a high-performance computing system. Following Microsoft Technology Licensing, examiners must analyse the substance of the invention rather than the form of the claims and take the claims as a whole, which clause 4.4.4 of the 2017 Guidelines itself underscores. The words per se in section 3(k) were inserted deliberately, as the Report of the Joint Committee on the Patents (Second Amendment) Bill records, so that genuine inventions developed on computer programs are not refused, a position similar to Article 52 of the European Patent Convention.
An order that reproduced two paragraphs of one cited document and one paragraph of another, and then recorded conclusions without any reasoning, was set aside. A third document appeared in the concluding paragraph although it had never been discussed. The same two documents had been cited in the European search report and the patent was granted there, which, the test of obviousness being common across jurisdictions, is at a minimum a material consideration.
A consent remand on terms. With the Registry offering reconsideration on instructions, the applicant agreed subject to two conditions: that the reconsideration be confined to the grounds on which the application was refused and to the prior art cited in the order, and that it be done by a different officer. The Registry accepted the first and the Court imposed the second to preclude confirmation bias.
An order that made no reference to any of the prior art cited in the examination report and summarily rejected the application could not stand. What makes this one worth keeping is the remand: the Controller was to proceed on the existing examination report and the hearing notice already issued, and no fresh hearing notice was to be issued.
Refusal quashed where the order was a verbatim reproduction of the hearing notice, set out twice over, with not a word of reference to the applicant's reply. The Court described an apparently endemic problem in the office of the Controller, of rejecting applications by reproducing the objections without any application of mind, and noted that because the twenty year term runs from the date of application, laconic refusals leave hardly any residual life in a patent that is eventually granted. General directions were issued: every order rejecting an application, or accepting or rejecting a pre-grant or post-grant opposition, must be reasoned and speaking and must deal systematically and sequentially with each objection, whether in the First Examination Report, the hearing notice or the opposition, giving reasons why it is sustained or rejected; and even where a patent is granted on the applicant's reply being accepted with no opposition, the order should briefly say why the reply was accepted, so as to assist any later post-grant opponent. The requirement does not apply where a patent is granted with no objection at all.
Refusal of a patent for a fungicidal treatment for black sigatoka was set aside and the application remanded. The finding that the invention lacked inventive step was unreasoned: the Controller compared prior art D1 to D7 without appreciating what they taught, left the applicant's written submissions unanswered, and did not apply the inventive step tests set out in Avery Dennison. The court restated that a specification is construed by reading the description of the invention before the claims, following Bishwanath Prasad Radhey Shyam.
An order was set aside where its 'Scientific and Technical Analysis' turned out to be a replication of the cited documents, mechanically assembled from similar sounding components by mosaicing seven prior arts without any justification for combining them. Terrell is quoted, carrying Lowndes' Patent: it is not open to take a packet of prior documents and, by putting a puzzle together, produce what is said to be a disclosure.
An order refusing a patent for want of inventive step was set aside as wholly unreasoned. Both D1 and D2 were cited in the First Examination Report and the hearing notice, but the order was silent on D2 altogether and never dealt with the significant differences from D1; obviousness was asserted without reasons after the section 3(k) objection had been waived, and corresponding foreign grants were ignored. Kranti Associates was applied on the duty to record reasons.
Refusal under section 15 for want of inventive step and sufficiency set aside and remanded. On section 10(4), the Court held that the mere absence of working examples does not render an application liable for rejection: section 10(4)(b) requires the applicant to disclose the best method of performing the invention known to him, which had been done, and the Controller insisted on working examples and rejected summarily without elaborating any reasons. On section 2(1)(ja), the two cited prior arts proposed significantly different teachings and addressed different problems, so a person skilled in the art could not realistically combine them, and it was inappropriate for the Controller to mosaic two substantially unrelated prior arts to invalidate the claim. The impugned order also reproduced the hearing notice objections verbatim without referring to the applicant's response, and contained no discussion of how the combination would be obvious.
Refusal set aside where the hearing notice raised only lack of novelty but the impugned order, passed on the day of the hearing itself, refused the application for lack of inventive step under section 2(1)(ja) while expressly recording that the claims were novel. The order thus went beyond the objection the applicant had been put on notice of. The applicant was also given no opportunity to file written submissions under Rule 28(7) of the Patents Rules.
Refusal set aside and the application for methods and apparatuses for bone restoration remanded, with a delay of 93 days in filing the appeal condoned. Four of the five objections raised in the hearing notice had been waived by the impugned order, which rejected the application on the remaining one without any reasoning, and did so on the unamended claims although an amended set had been filed with the post-hearing written submissions. Applying Agriboard International, the Court held the order to be completely cryptic and lacking any justification for the finding of non-patentability.
Where re-examination under section 13(3) turned up five fresh prior art documents, the Controller was bound to issue a Second Examination Report; raising those objections for the first time in the hearing notice was contrary to sections 13(3) and 14 read with Rules 28 and 28A. The order also reproduced the appellant's own written submissions, adopted a piecemeal approach of matching parts of the invention against chosen passages of the prior art, and recorded conclusions with no element of why to support them.
A decision may be brief and to the point but must still reveal the logic and reasoning behind it, and reasons must be cogent, clear and indicate that the authority gave due consideration to the points in controversy. The order reproduced the applicant's contentions verbatim and then rejected the application tersely. It also failed to conform to the Manual, which requires obviousness to be judged strictly and objectively.
Allowed and remanded. The refusal of an application for a field adjustable impact jar jumped to the conclusion that the invention lacked inventive step with no discussion of why the prior art applied, despite a reply distinguishing D1 and D2 on the absence of an externally accessible adjustor and adjustment window.
Allowed and remanded. The order rejecting the application for a step-action indexing mechanism concluded that the invention lacked inventive step without any discussion of why prior art D1, D2 and D3 defeated the claims, and without engaging the applicant's detailed explanation distinguishing them. A cryptic order of that kind cannot stand.
