Background

The article covers an Appeal, C.A. (COMM.IPD-PAT) 60/2024, filed by Dong Yang PC, Inc. a Korean company against the decision of Controller of Patents and Designs (Controller) whereby it rejected Dong Yang PC, Inc. (Appellant) Patent Application No. 2554/DEL/2013 relating to a “Vertical Rotary Parking System”. The application was refused on grounds of lack of inventive step and being a mere workshop modification of prior art.

The appellant filed the patent application on August 29, 2013, for a vertical rotary parking system designed to maximize vehicle parking in narrow spaces. The application underwent examination, with the First Examination Report issued in August 2018. A pre-grant opposition was filed by M/s. Parkerbot India Private Limited citing prior documents D-1 to D-4, and later, a new prior art document D-5 was introduced by the opponent shortly before the hearing scheduled in November 2023. The appellant responded with amendments and submissions, however, the Controller rejected the application on April 12, 2024, citing lack of inventive step primarily based on document D-5, which belonged to the appellant itself and was published on 13th September 2003.

Controller’s Reasons for Rejecting the Patent

1. Non-disclosure at the time of filing: The Controller noted that the appellant, Dong Yang PC, Inc., did not disclose the prior art document D-5 (KR200326138Y1) at the time of filing the patent application. The Controller emphasized that all material facts, including any asserted technical advancements, must be disclosed in the complete specification at the time of filing.
2. Workshop modification: The Controller found that the claimed invention was merely a workshop modification of the prior art document D-5. The distinguishing feature in the claimed invention was limited to the mere reversal or interchange of the male and female coupling elements between the suspension chain and the pull gear. The Controller concluded that this alteration was mechanical in nature and did not result in any technical improvement over the cited prior art document D-5.
3. Lack of technical advancement: The Controller disagreed with the appellant’s contention that the proposed design in the present invention would lead to smooth and vibration-free transmission of power. The Controller opined that the mere interchanging of the male and female portions would not give such advantages or any technical advancements. There was no comparative data analysis or designs of meshing gears or advantageous solutions proposed in the complete specification or in written submissions to support the appellant’s contentions.

Appellant’s Contentions and Court’s Observations

The appellant argued that the invention provides technical advancements such as a) reduced friction b) lower noise, and c) enhanced safety compared to D-5 (prior art document). The appellant contended that the Controller’s rejection was based on an incomplete assessment, lacking evidence that the interchange was obvious or a mere workshop modification.

The court rejected the reasoning of the Controller of Patents and Designs observing the following while setting aside the Controller’s order dated April 12, 2024, and remanded the matter for de novo consideration by a different officer at the patent office.

1. Lack of Technical Advancement: The court found that the Controller failed to substantiate how the claimed invention did not involve any technical advancement. The Controller’s conclusion that the invention was merely a workshop modification was not supported by any authoritative documents.
2. Obviousness: The court noted that the Controller’s finding of obviousness lacked foundation. There was no evidence to demonstrate that the reconfiguration of the male and female coupling elements was an obvious modification.
3. Simplicity and Patentability: The court emphasized that simplicity does not preclude patentability. Even simple changes can introduce discernible and substantive differences, leading to a new invention. The Controller failed to provide specific reasons as to how the structural optimization of the male and female portions did not involve technical expertise.
4. Common General Knowledge: The court criticized the Controller’s reliance on “common general knowledge” without specifying the source of this knowledge. The Controller did not provide any reference to what constituted common general knowledge, making the finding speculative and unsustainable.
5. Amendment of Specifications: The court found that the Controller unjustly refused the appellant’s application to amend the specifications to include prior art document D-5. The court held that the refusal to allow the amendment deprived the appellant of a fair opportunity to address the objections raised by the Controller.
6. Technical Evidence: The court acknowledged the appellant’s submission of a Technical Evidence Affidavit, which provided stress analysis reports to demonstrate the technical improvements of the invention over D-5. The court recognized the relevance of such evidence in assessing inventive step.
7. Time Gap and Inventive Step: The court highlighted that one of the sure tests in analysing the existence of an inventive step is the time gap between the prior art document and the invention under consideration. The court noted that if the invention was so obvious, it would have been made earlier by others, which was not the case here.
8. Principles of Natural Justice: The court concluded that the Controller’s refusal to allow the amendment application amounted to a violation of the principles of natural justice, as it denied the appellant a fair opportunity to respond to the newly cited prior art at the hearing stage.

Key Takeaways

1. The Patent office must give fair chance to Patentee to amend the specifications even at a subsequent stage, so long as the amendments are within the scope of the original claims and specifications. Outright refusal violated principles of natural justice by denying a fair chance to address objections.
2. Time gap between prior art document and the invention is an important factor in considering the obviousness of a Patent.
3. Common general knowledge as a ground for refusing a patent application must specify the source of the said knowledge.