The article discusses Appeal filed at Bombay High Court against refusal of patent application No. 851/MUM/2015

Background

1. The Petitioners, Mohun Nicholas D’Souza and Vishal Prafulsingh Solanke (Petitioners), approached the Bombay High Court challenging the rejection of their patent application No. 1851/MUM/2015 titled “Tamper Evident Twist Seal with Breakaway Anchor Mechanism”.
2. The invention pertains to a security locking mechanism, specifically a twist-type seal designed to prevent tampering, involving a rotor/insert and encapsulated body with unidirectional rotation to form a secure wire locking loop.
3. The patent application had undergone detailed examination, including a pre-grant opposition, following which the Controller of Patents rejected the application on the ground of lacking inventive step under Section 25(1)(e) of the Patents Act, 1970.

Petitioner’s Submissions:

1. The rejection under Section 25(1)(e) that is ‘lack of novelty’ is inconsistent with the conclusion under Section 25(1)(b) where the invention’s novelty was acknowledged.
2. The Controller incorrectly combined prior art references (US5782513 and US6390519) to establish obviousness, without applying the appropriate legal standards.
3. The rulings from the Delhi and Calcutta High Courts clearly provides that the assessment of ‘novelty’ and ‘inventive step’ must be conducted independently, and that reliance on common general knowledge must be substantiated with concrete evidence.
4. The Controller failed to consider the detailed written arguments and supporting case law submitted by the Petitioner.

Respondent’s (patent office) Submissions:

1. The invention in question was simply an aggregation of existing prior art elements with minor variations.
2. There was no demonstration of any technical advancement or inventive merit.
3. The Controller’s finding that the claimed invention lacks ‘inventive step’ was accurate and well-founded.

Court’s Observations:

1. Inconsistent Reasoning: The Controller upheld ‘novelty’ under Section 25(1)(b) but contradicted this by stating the invention was anticipated when assessing obviousness.

   The Court observed that the Controller’s findings on prior art were contradictory. While rejecting the opposition under Section 25(1)(b), the Controller held that no single prior art document disclosed all features of the claimed invention, thereby upholding its novelty. However, while allowing the opposition under Section 25(1)(e), the Controller stated that the same prior art documents “completely anticipate” the invention and render it obvious, which is an inconsistent conclusion, as an invention cannot be both novel and fully anticipated.

   Furthermore, the Court noted that the Controller relied on a mosaic of two prior art documents (D-1 and D-2) to establish obviousness but failed to provide any explanation as to why a person skilled in the art would be motivated to combine them.

2. Lack of Reasoned Analysis: The Controller failed to identify the inventive concept, assess the claimed differences against prior art, and justify how a person skilled in the art would find the invention obvious without relying on hindsight. The Court noted, there must be a coherent thread leading from the prior arts to the invention, and this tracing must be an act that follows obviously and should not be a hindsight deduction. The court also highlighted that the Controller did not identify the inventive concept as claimed by the applicant or consider the differences between the claimed invention and prior art.

   The Court noted that the Controller did not properly apply the established multi-step legal tests for inventive step and obviousness, such as those set forth in F. Hoffmann-La Roche Ltd. v. Cipla, Avery Dennison Corporation v. Controller of Patents, and the Windsurfing and Pozzoli tests. Instead, the Controller’s reasoning was superficial, lacking analysis of the inventive concept or why a skilled person would consider the invention obvious. Furthermore, the Court found that the Controller erred by applying hindsight bias improperly using knowledge of the invention to assess obviousness, contravening well-settled principles of patent law.

The court noted that the mere existence of each element of the invention in prior arts does not automatically mean obviousness

1. Non-Consideration of Submissions: The Petitioner’s written submissions, highlighting distinctions from prior art and supporting judgments, were not considered.

   The Court observed several procedural lapses by the Controller in the impugned order. Despite the Petitioner submitting detailed written arguments highlighting the distinctions between the claimed invention and prior art, along with relevant judicial precedents, the Controller failed to acknowledge or address these submissions, reflecting a significant procedural oversight.

   The Court held that the Controller’s decision lacked adequate reasoning and procedural fairness. As a result, the impugned order dated 22 August 2023 refusing the patent application was quashed and the matter was remanded to the Controller for fresh adjudication.

Our comment

This decision reinforces that a) the mere existence of each element of the invention in prior arts does not automatically mean obviousness b) the inventive concept must be assessed against prior art and requires justification as to how a person skilled in the art would find the invention obvious without relying on hindsight c) and finally there must be a coherent thread leading from the prior arts to the invention, and this tracing must be an act that follows obviously and should not be a hindsight deduction.