Inventive Step and Procedural Fairness

Facts

The case involved an appeal by Neeraj Gupta (“Appellant”) against the Controller of Patents and Designs (“Respondent”) after the rejection of his patent application titled ‘An Intravenous Catheter Device’. The device’s primary purpose is to infuse medication or fluids directly into a vein or draw blood samples for testing. The patent application (No. 201911036272) was filed on September 10, 2019 before the Indian Patent Office. The device aimed to improve upon existing catheter technologies, especially in solving problems related to blood backflow prevention.

Procedural Details

Upon initial scrutiny, the Patent Office issued the First Examination Report (Fer) on February 10, 2020, citing lack of novelty and inventive step, with particular reference to prior art documents D1 (WO2018096549A1) and D2 (WO2015161294A1). The Appellant replied to Fer, addressing the objections with detailed arguments and clarifications. Subsequently, hearings were held, and written submissions were filed, but the Controller rejected the application via an order dated February 11, 2021. A review petition was filed by the Appellant, which was dismissed as well. The matter then came up before the High Court in appeal under Section 117A of the Patents Act, 1970.

Nature Of Dispute

The main contention was the validity of the Controller’s rejection, which was based on the assertion that the catheter device lacked the inventive step required under the Patents Act. The Controller held that the disclosed device was obvious to a person skilled in the art when considering the combined teaching of D1 and D2. The Appellant argued that the Controller had not truly considered the novel aspects of his invention, especially the ‘valve closure member’, and alleged procedural errors and lack of proper reasoning in the Controller’s order.

Reasoning

The Appellant argued that his device’s distinguishing feature—a “valve closure member”—was not found in prior art and formed the inventive core of the invention. The Appellant criticized the Controller for arbitrarily combining features from D1 and D2 without showing how an ordinary skilled person would combine these references to produce the invention. The Appellant pointed out that while prior art relied on material elasticity for self-sealing, his invention used a mechanical force exerted by the valve closure member for more reliable prevention of blood backflow.

The Respondent insisted that features claimed as novel were obvious in view of prior documents. Specifically, the Respondent pointed to certain sections and drawings in D1 and D2, arguing they disclosed or at least suggested the allegedly inventive element. However, the Court observed that critical differences, such as the shape, composition, and mechanism of operation of the valve and the effectiveness in long-term prevention of blood backflow, were not discussed in detail in the Controller’s decision.

The High Court referred to precedent, notably Agriboard International LLC v. Deputy Controller Of Patents And Designs (2022 SCC OnLine Del 940), which clarified how a controller should examine obviousness. The judgment mandates a three-step reasoning: discuss prior art, discuss the invention under review, and then logically explain why the invention would be obvious to a skilled person.

The Court examined documents D1 and D2 thoroughly. D1’s primary goal was to prevent blood backflow using a flexible valve design without an additional closure member. D2 solved backflow issues using the elasticity and self-sealing property of a septum, also preventing flow by channels engineered for this purpose. However, it relied on intermolecular forces in blood versus air, which only worked for a limited time. The High Court found that neither prior art fully disclosed a valve closure member as designed by the Appellant, which forcefully sealed the prongs and thus the slit, overcoming limitations of material fatigue and longevity found in prior solutions. The Controller’s finding that all features were present in prior art was critically examined and found lacking. The Court emphasized the absence of meaningful discussion on why the invention would be obvious and pointed out procedural failings—most prominently, the lack of adequate reasoning, a point highlighted in Agriboard International.

Decision

The High Court, after careful review, set aside both the original rejection and the order dismissing the review petition. The Court ordered the matter to be remanded back to the Patent Office for fresh consideration, with the explicit instruction that the Controller must provide an opportunity for re-hearing and apply the three-stage reasoning mandated by law, uninfluenced by any observations made in this Order.

Conclusion

This judgment reaffirms that decisions rejecting patent applications for lack of inventive step must be supported with clear and logical reasoning. The Court clarified that mere references to prior art are not enough; every element claimed as inventive must be duly examined and reasoned. The procedural protections embedded in patent law exist to ensure that inventors benefit from a fair hearing and thorough consideration. This case also highlights the significance of economic and technical advancement as components of the inventive step under Section 2(1)(ja) of the Patents Act, and sets an example of judicial adherence to reasoned decision-making in intellectual property matters.