In the realm of intellectual property law, the concept of an "inventive step" often serves as the crucible in which patent applications are tested. The case of Avery Dennison Corporation vs. Controller of Patents and Designs, decided on November 4, 2022, by the Delhi High Court, exemplifies this intricate legal scrutiny. At its core, this appeal challenged the refusal of a patent for a "Notched Fastener" on the grounds that it lacked an inventive step under the Indian Patents Act, 1970.

The case delves into the nuances of patentability, the evaluation of prior art, and the judicial approaches to determining obviousness, offering a compelling narrative of technical innovation pitted against legal rigor. This detailed case study explores the factual and procedural backdrop, the legal issues, the arguments of the parties, the judicial reasoning, and the broader implications of the court's decision.

Detailed Factual Background
Avery Dennison Corporation, a global leader in branding and labeling solutions, has been a prominent name since its inception in 1935 as Kum Kleen Products, later merging with Dennison Manufacturing Company in 1990 to adopt its current identity. The corporation specializes in manufacturing labeling materials designed to enhance brand packaging and convey product information.

The subject of this dispute was a patent application titled "Notched Fastener," bearing Application No. 5160/DELNP/2013, filed in India on June 10, 2013, as part of the national phase entry of a PCT application (PCT/US2011/062189) dated November 28, 2011. The invention aimed to improve fastener stock used in industries for attaching tags or labels, addressing issues of inconsistency in cutting and wastage in conventional systems.

The fastener stock in question was designed to ensure uniform dispensing and consistent cutting through specific features: the strategic positioning, shape, and orientation of notches. These notches, described as rectangular or square and aligned with desired cut locations, facilitated precise severance of fasteners from the stock, reducing variations caused by the elasticity of materials in traditional systems. The invention promised economic significance by simplifying manufacturing processes and enhancing the reliability of fastener application.

Detailed Procedural Background

The procedural journey of the patent application began with its filing in India, followed by a request for examination. On April 25, 2018, the Controller of Patents issued a First Examination Report (FER), raising objections primarily on the ground of lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970. The FER cited three prior art documents:

• D1: GB2053296A (published February 4, 1981), related to fastener guns.
• D2: WO 94/10044A1 (published May 11, 1994), an earlier application by Avery Dennison concerning an apparatus for dispensing fasteners from ladder stock.
• D3: US4456123A (published June 26, 1984), another document on fastener mechanisms.

In response, Avery Dennison amended its claims and submitted arguments to counter the objections. However, the Controller remained unconvinced, leading to a hearing on March 1, 2021. The applicant filed written submissions on March 16, 2021, but the Controller, in an order dated August 12, 2021, refused the patent application under Section 15 of the Act, citing a lack of inventive step based primarily on prior art documents D2 and D3. Aggrieved by this decision, Avery Dennison appealed to the Delhi High Court under Section 117A(2) of the Patents Act, seeking to set aside the Controller's order.

Issues Involved in the Case

The central issue in this case was whether the subject patent application for the "Notched Fastener" lacked an inventive step under Section 2(1)(ja) of the Patents Act, 1970, in light of the cited prior art, particularly D2. Subsumed within this issue were several critical questions:

• Did the specific features of the notch (its position, shape, and orientation) constitute a technical advancement over the prior art?
• Was the invention obvious to a person skilled in the art, given the disclosures in D2 and other prior art documents?
• Did the Controller adequately analyze the prior art and the subject invention to justify the refusal?
• Could the invention be dismissed as a mere workshop improvement or an attempt at evergreening an earlier patent?

These questions required the court to navigate the complex interplay of technical innovation, legal standards for patentability, and judicial precedents on obviousness.

Detailed Submission of Parties

• The appellant argued vehemently that the subject patent embodied an inventive step. The key submissions were:
  • The invention's novelty lay in the notch's creation, position, shape (rectangular or square), and orientation relative to cross-pieces, which collectively addressed the problem of inconsistent cutting due to the elasticity of fastener stock.
  • The technical advancement was evident in achieving uniform dispensing and precise severance, reducing wastage and enhancing economic efficiency.
  • Prior art document D2, while relevant, was distinguishable. D2 used triangular notches engaged by a pawl mechanism, which was less efficient and more complex to manufacture compared to the subject patent's direct engagement with the feeding system.
  • D3 was irrelevant as its notches were positioned for cutting rather than engaging the feeder mechanism, effectively teaching away from the subject invention.
  • The appellant emphasized that the invention's simplicity should not negate its patentability, and the economic significance of the notched fastener justified its protection.
• In contrast, the Controller defended the refusal, arguing:
  • The notch's features in the subject patent were obvious variations of D2, which already disclosed the use of notches for fastener stock movement. A change in shape or position was a mere workshop improvement, not an inventive step.
  • The engagement mechanism (pawl vs. direct) was irrelevant to the inventive step analysis.
  • As D2 was also filed by Avery Dennison, the subject patent appeared to be an attempt at evergreening an earlier invention.
  • The appellant failed to provide substantial data to support claims of economic advantage.
  • The Controller relied on judicial precedent, notably Bristol-Myers Squibb Holdings Ireland Unlimited Company v. BDR Pharmaceuticals International Pvt. Ltd., (2020) SCC OnLine Del 1700, to argue that minor modifications do not warrant patent protection.

• Detailed Discussion on Judgments Cited by Parties
  • Bristol-Myers Squibb Holdings Ireland Unlimited Company v. BDR Pharmaceuticals International Pvt. Ltd., (2020) SCC OnLine Del 1700: Cited by the Controller to argue that minor changes, such as the notch's shape or position, constitute workshop improvements rather than inventive steps.
  • F. Hoffmann-La Roche Ltd. and Ors. v. Cipla Ltd., 2016(65) PTC 1 (Del): Referenced by the court to discuss the problem-solution approach to obviousness.
  • Windsurfing International Inc. v. Tabur Marine Ltd., [1985] RPC 59: A seminal UK case cited by the court, laying down a four-step test for obviousness.
  • Pozzoli Spa v. BDMO SA, [2006] EWHC 1398 (Ch): Cited to refine the Windsurfing test, emphasizing the identification of the person skilled in the art and the inventive concept.
  • Actavis Group PTC EHF v. ICOS Corporation, [2019] RPC 9: Referenced for its comprehensive list of considerations for assessing obviousness.
  • Human Genome Sciences v. Eli Lilly, [2012] RPC 6: Cited alongside Actavis to underscore the need for a nuanced approach to obviousness.
  • Johns-Manville Corporation, [1967] R.P.C. 479: Mentioned to reinforce the importance of considering the skilled person's knowledge at the priority date.
  • KSR International v. Teleflex, 550 U.S. 398 (2007): A U.S. Supreme Court case cited to discuss the TSM test.
  • Vickers v. Siddell, (1890) 7 R.P.C. 292: Invoked to emphasize that simplicity does not negate inventiveness.
  • Pope Appliance Corp. v. Spanish River Pulp & Paper Mills Ltd., (1929) 46 R.P.C. 23: Cited to reinforce that simplicity and bold conception can justify patentability.
  • Brugger v. Medic-Aid Ltd., [1996] R.P.C. 635: Referenced via Terrell on Law of Patents to highlight the "long felt want" concept.
  • Agriboard International LLC. v. Deputy Controller of Patents & Designs, [C.A.(COMM.IPD-PAT) 4/2022, dated March 31, 2022]: A recent Delhi High Court decision cited to stress detailed analysis is required for refusal under inventive step.
  • 3M Innovative Properties Ltd. and Ors. vs. Venus Safety and Health Pvt. Ltd., FAO (OS) 292/2014 & CM No. 10651/2014: Referred to for its approach to comparing prior art with the claimed invention.
• Detailed Reasoning and Analysis of Judge
  • The court's judgment is a meticulous exposition of patent law principles, blending technical analysis with legal reasoning.
  • The inventive concept was identified as residing in three features: the position of the notch, the shape of the notch, and the direction of the notch relative to cross-pieces.
  • The court compared these features with D2, noting the improvements and addressing D2's shortcomings.
  • The Windsurfing/Pozzoli test was applied, highlighting significant differences between D2 and the subject patent.
  • The court rejected the Controller's "superficial" argument, citing Vickers and Pope.
  • The 18-year gap between D2 and the subject patent and the lack of intervening solutions strengthened non-obviousness.
  • The Controller's evergreening argument was dismissed, and international grants were acknowledged.
  • The court criticized the Controller's lack of detailed analysis, citing Agriboard as precedent.
• Final Decision
  • The Delhi High Court allowed the appeal, set aside the Controller's order, and directed the patent to proceed for grant.
  • The case was listed before the Patent Office for completion of formalities, with no costs awarded.
• Law Settled in this Case
  • Simplicity in an invention does not preclude patentability if it addresses a technical problem with unpredictable advantages.
  • A significant time gap between prior art and the invention, with no intervening solutions, supports non-obviousness.
  • The Controller must provide a reasoned analysis of prior art, the subject invention, and obviousness to justify refusal under Section 2(1)(ja).
  • The Windsurfing/Pozzoli test, as modified by Indian precedents, is a robust framework for assessing inventive step, but courts may adopt a flexible approach combining multiple tests.

Evergreening objections require evidence of mere extension rather than technical advancement.

Case Title: Avery Dennison Corporation Vs. Controller of Patents and Designs
Date of Order: November 4, 2022
Case No.: C.A. (COMM. IPD-PAT) 29/2021
Neutral Citation: 2022/DHC/004697
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Justice Prathiba M. Singh

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539