Imminent Need To Update Patent Manual For Better Guidance Of Examiners & Controllers: Delhi High Court

The Delhi High Court has observed that there is an imminent need to update the “Manual of Patent Office Practice and Procedure” so that the Examiners and Controllers can get better guidance on dealing with intricate matters related to complex inventions.

“As the number of Patent filings in India are rapidly increasing and there is an imminent need to update the Manual of Patent Office Practice and Procedure so that Examiners and Controllers can get better guidance on dealing intricate matters like objections of lack of clarity and succinctness. This would be particularly useful when dealing with complex patents involving Artificial Intelligence systems, machine learning functions, agro- chemicals, pharmaceuticals and manufacturing methods,” Justice Amit Bansal said.

The court noted that the Manual issued by the Office of the Controller General of Patents, Designs and Trademarks on November 26, 2019, does not give any guidance on what constitutes succinctness or how to identify lack of succinctness.

“It is often observed that patent applications in these domains either have a large number of Claims or involve a lot of features, which are interlinked to each other. Therefore, I would recommend to the Office of the Controller General of Patents, Designs and Trademarks to update or revise the Manual for Practice. This would ensure that Examiners and Controllers can be better equipped to ascertain aspects like clarity and succinctness of inventions,” the court said.

It added that the Office of CGPDTM may also consider giving adequate technical and patent analytics training to the Examiners and Controllers.

The court was hearing an appeal moved by two entities under the Patents Act, 1970 challenging the order of the Assistant Controller of Patents and Designs refusing to grant them patent. The entities had filed an application for grant of patent titled “Manufacturing of Decorative Laminates by Inkjet” on July 08, 2016.

Granting relief to the entities, the court set aside the impugned order and noted that no specific observation was given by the Controller for the lack of succinctness in the patent claims.

“In view of the discussions above, the impugned order dated 17th June, 2022 is set aside and the Patent Office shall proceed to grant the patent, subject to completion of necessary formalities. List before the Patent Office on 14th June, 2023 for completion of necessary formalities,” the court ordered.

Title: AGFA NV & ANR. v. THE ASSISTANT CONTROLLER OF PATENTS AND DESIGNS & ANR.

Citation: 2023 LiveLaw (Del) 486

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