Saint Gobain Glass France vs Assistant Controller of Patents & Asahi India Glass (C.A. (COMM.IPD-PAT) 13/2024- Delhi High Court

Background

1. The dispute centres around Indian Patent Application No. 201717045317, titled “Material comprising a stack of thin layers” filed by Saint Gobain Glass a French company specializing in glass products for various industries.
2. The application was filed as a national phase entry under the Patent Cooperation Treaty (PCT), claiming priority from French application FR1556502 dated July 9, 2015.
3. A Pre-grant opposition filed by Asahi India Glass (Respondent No. 2).
4. The invention relates to a glass substrate coated with a stack of thin layers, including a silver-based functional layer, designed to achieve specific optical properties (neutral transmission colours, glossy silver reflection, high external reflection, and maintained solar performance).

Controller’s Decision:

On January 5, 2024, the Controller refused the patent application, citing lack of inventive step and obviousness over prior art.

Appeal:

Saint Gobain Glass France appealed the Controller’s decision under Section 117A of the Patents Act, 1970.

Core Issues Before the Appeal Court were

1. Inventive Step & Obviousness- Was the invention non-obvious over prior art?
2. Technical Advancement- Did the invention show technical advancement over existing knowledge?
3. Sufficiency of Disclosure- Was the experimental data adequate to support the claimed advancement?
4. Mosaicing of Prior Art- Was it permissible to combine multiple prior arts to assess obviousness?
5. Person Skilled in the Art (PSITA)- What is the correct standard for PSITA in Indian law?
6. Territorial Patent Rights- Does a foreign patent grant affect the Indian decision?

Our analysis focuses on what is required to show Technical Advancement over existing knowledge and overcome the objection of obviousness over Prior Art

1. When an invention involves modifications that might appear obvious at first glance, the comparative experimental results become crucial in determining the inventive step (or non-obviousness) of a patent application.
2. The experiment results help demonstrate that the claimed invention provides a technical advantage or achieves an unexpected effect compared to the closest prior art.
3. The applicant to overcome the objection that the invention is not merely a predictable outcome of existing knowledge in such cases must provide data based on experiments that clearly shows improved performance, enhanced properties, or surprising results.
4. The evidence is often essential in rebutting objections raised by patent examiners and in establishing that the invention solves a technical problem in a non-obvious way.
5. To be effective, the experimental results must directly compare the invention with the relevant prior art and clearly highlight the advantages, thereby strengthening the case for patentability.

The Court analysis of the Technical Advancement.

1. The applicant submitted comparative data based on minor differences in thickness of the layers between the claimed stack and comparative examples, highlighting optical parameters such as light transmission (LT%), external reflection (LRext%), and colour values (aext, bext) were different in the comparative stacks.
2. The court observed that the comparative data provided included configurations containing a Lower Blocking Layer (LBL), which was subsequently excluded by amendment to independent Claim 1. As such, the absence of supporting data for the invention without the LBL is a material deficiency in establishing technical advancement.
3. The Appellant (Saint Gobain) submitted an expert affidavit, for curing the above deficiency. However, the court held that the selective presentation of data, inconsistent with the broader technical objectives stated in the specification, diminishes the probative value of the affidavit and the appellant failed to demonstrate that the claimed invention, achieves any significant technical improvement over the prior art.
4. The Court found that each prior art cited by the Controller pertains to the same technical field as the claimed invention namely, glazing comprising a transparent substrate coated with a stack of thin layers, including a silver-based functional layer. All the prior arts address coatings involving silver and Nickel/Chromium blocking layers for solar or optical control, falling squarely within the domain of the claimed invention.
5. The court concluded a person skilled in the art would naturally be motivated to consult and combine these prior arts to solve the technical problem existing at the time of filing.
6. The court while dismissing the appellant’s (Saint Gobain) submission that the Controller engaged in hindsight or improper ‘cherry-picking’ held that the combination of prior arts here constitutes a legitimate and logical mosaicing of directly related teachings within the same technical field, rather than impermissible hindsight reconstruction.
7. The court observed that the distinguishing features relied upon by the appellant do not establish any unexpected technical advancement over the cited prior arts. When viewed collectively, the prior arts disclose all essential elements of the invention. The court held that the appellant has not demonstrated any surprising or non-obvious effect that would preclude a skilled person from combining these teachings.

Key takeaways

1. The objective comparative experimental data is the best way to establish technical advancement over prior art.
2. If the claimed invention’s performance is similar to or only marginally better than prior art, it will likely fail the inventive step test.
3. combining multiple prior art documents (“mosaicing”) is allowed if a person skilled in the art would be motivated to do so. The key is whether the prior arts are related to the inventive concept and whether their combination would be obvious to a skilled person
4. Consistency between the complete specification, claims, and supporting affidavits is essential

*Asahi India Glass Limited- Respondent no. 2 was represented by the team of RNA, IP Attorneys