There are many grounds on the basis of which a patent can be attacked. like
novelty, inventive step, insufficient disclosure in the patent etc. In order to
defeat a patent on the ground of novelty, the person aggrieved must disclose all
the vital aspects of the claims in a single prior art. In the event that such a
single prior art is not available, the patent can still be challenged on the
ground of lacking inventive steps.
For example, while mosaicing is not permissible for evaluating , it is
permissible in relation to evaluating inventive steps. A Patent can be defeated
on the ground of mosaicing. A Patent can be evaluated in terms of inventive step
in light of two or more pieces of prior art information in combination. But in
order to succeed, it is required to establish that a person skilled in the
relevant art could reasonably have been expected to combine such information.
The term "inventive step" has been defined with the provision of Section
2(1)(ja) of the Indian Patents Act 1970. This provision defines "an inventive
step" as "a feature of an invention that involves a technical advancement over
existing knowledge or has economic significance, or both, and that makes the
invention not obvious to a person skilled in the art."
Section 25 (1)(e) of the Indian Patent Act 1970 provides a ground on which lack
of inventive step can be taken as a ground in a pre grant notice of opposition.
While Section 25 (2) (e) of the Indian Patent Act 1970 provides a ground in
which lack of inventive step can be taken as a ground in post grant notice of
opposition, Section 64 (1) (f) of the Indian Patent Act 1970 provides a ground
in which lack of inventive step can be taken as a ground for revocation of a
patent in a counter claim or in a revocation petition.
Now the question is this: how can the inventive steps be evaluated in a patent?
Or in other words, what are the necessary elements that are required to be seen
while evaluating the inventive step in a patent? The Hon'ble High Court of
Delhi, vide its judgement dated 24.08.2022 passed in Appeal bearing No.
C.A.(COMM.IPD-PAT) 25/2021 titled as Gogoro INC Vs The Controller of Patents and
Designs and Others, explained as to what are the necessary ingredients which are
required to be seen while rejecting or allowing the claims of a patent in the
context of inventive step.
The facts which have given rise to the filing of the subject matter appeal were
like this: This Appeal has been filed by the Appellant challenging the impugned
order dated August 8, 2021, passed by the Ld. Asst. Controller of Patents
whereby Appellant's application bearing no. 1312/DELNP/2014 for an invention
titled "Apparatus, Method, And Article For Authentication, Security, And
Control Of Power Storage Devices Such As Batteries
" was rejected.
The subject matter patent application has been rejected by the controller of
patents on the grounds of lacking inventive steps.
The grounds of lack of novelty were not insisted upon by the Controller of
Patents. There were 3 prior arts, D1 to D3, which were cited only for the
purpose of lacking inventive steps and not for lacking novelty. However, only D1
was discussed by the controller of patents.
According to the Appellant , there was no proper discussion as to how the
subject matter patent application filed by the Appellant lacks inventive steps.
According to the appellant, the order assailed was bereft of reasoning.
The Hon'ble High Court of Delhi has given the criteria as to what are the basic
ingredients for deciding a lack of inventive step. These criteria have been
discussed in the judgement dated 31.03.2022 passed in CA Comm IPD Patent 04 of
2022 titled as Agriboard International LLC Vs Deputy Controller of Patents. This
criteria has been followed in the subject matter judgement.
The facts in the afore mentioned Agriboard Judgement were that Appellant's
patent application bearing no. 202014010848 for the invention 'Efficient Method
and Apparatus for Producing Compressed Structural Fiberboard' has been refused
on the ground of lack of inventive step under Section 2(1)(ja) of the Act. The
controller of Patent cited three prior art documents in this case (D1:
US5945132A, D2: US20090188642A1, and D3: CN102026785B). However, the Ld.
Controller did not evaluate the subject matter patent with respect to lacking
inventive step in a proper manner. The Hon'ble High Court of Delhi observed that
the following are the necessary elements for deciding inventive steps:
"The invention disclosed in the prior art, the invention disclosed in the
application under consideration, and the manner in which the subject invention
would be obvious to a person skilled in the art."
The Hon'ble High Court of Delhi again reiterated that the afore mentioned ratio
as laid down in judgement dated 31.03.2022 passed in CA Comm IPD Patent 04 of
2022 titled as Agriboard International LLC Vs. Deputy Controller of Patent
It is apparent that while evaluating the inventive step, the basic element which
is required to be seen is that the court has to evaluate the prior art in the
manner to see whether, because of the disclosure made in the prior art, the
subject invention would be obvious to a person skilled in the art. Of course, it
has to be after identifying the relevant prior art.
The Hon'ble High Court of Delhi observed that the impugned order was bereft of
any proper reasoning and discussion with respect to important elements while
rejecting the patent application on the ground of lacking inventive step. As in
the order assailed, there was no proper discussion regarding inventive step. The
matter was remanded back to the controller to decide the objection afresh
Case Law Discussed:
Case No. C.A.(COMM.IPD-PAT) 25/2021
Hon'ble High Court of Delhi
Prathiba M SIngh, H.J
Gogoro INC Vs The Controller of Patent and Designs
Written By: Ajay Amitabh Suman,
IPR Advocate, Hon'ble High Court of
Email: [email protected]