Patent Application Can't Be Dissected For Registration Into Isolated Elements, Test Of Inventiveness Is Applied Considering Invention As A Whole: Calcutta HC
The Calcutta High Court recently, in hearing an appeal under Section 117A(2) of the Patents Act, has ruled that for applying the test of inventiveness of an invention sought to be registered under the Act, the same has to be applied by considering the invention as a whole. The Court further noted that as regards determining the obviousness of such invention, the Court ought to apply...
The Calcutta High Court recently, in hearing an appeal under Section 117A(2) of the Patents Act, has ruled that for applying the test of inventiveness of an invention sought to be registered under the Act, the same has to be applied by considering the invention as a whole.
The Court further noted that as regards determining the obviousness of such invention, the Court ought to apply such standard strictly and objectively without dissecting such application for registration into isolated elements.
The Court was hearing challenge to the order of Assistant Controller of Patents and Designs rejecting an application for registration of an invention titled “Head for processing Tape-Shaped material and method for manufacture thereof” claimed by Groz-Beckert KG, the appellants.
Counsels for the appellant contended that the said impugned order was liable to be set aside for failing to consider the said invention as a whole by erroneously segregating the said invention and further failing to consider the multiple features of the said invention.
The Court agreed with the submissions of the appellant by noting that the said impugned order dissected the subject invention into two isolated elements by characterising the subject invention as having two main features. Relying on paragraph 9.03.03.02 of the Indian Manual of Patent Office Practice and Procedure together with the decisions of the Supreme Court in Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, reported in (1979) 2 SCC 511, the Single Judge Bench of Justice Ravi Krishan Kapur observed:
“Thus, in determining inventive steps, the invention should be considered as a whole. In other words, it is not sufficient to draw the conclusion that a claimed invention is obvious merely because individual parts of the claim taken separately are known or might be found to be obvious. The contention that an invention is obvious in relation to a particular item must be treated with care and caution. In doing so, the whole picture presented should be taken into consideration and not a partial one. There should be an element of preciseness about what is asserted to be common general knowledge. The “obviousness” must also be strictly and objectively judged.”
Setting aside the impugned order of the Assistant Controller of Patents and Designs, the Court held:
“I find the impugned order is erroneous inasmuch as it dissects the subject application into two isolated elements. Moreover, the critical feature of having technical advance, as described by the appellant has also been ignored. The impugned order primarily relies on a document marked D4 which is the appellant’s own patent and fails to consider the subject invention at hand which is an improvement thereon. The impugned order fails to apply the test of determination of inventive steps and consider the invention as a whole. The conclusion that the invention lacks inventive steps is also unreasoned. This finding is also based on incomplete facts and is bereft of reasons.”
The Court accordingly set aside the impugned order of the Assistant Controller of Patents and Designs by remanding the instant proceeding back to the said adjudicating authority with a direction to consider the application for registration of the said invention afresh within a period of three weeks hence.
Case: Groz-Beckert KG v. Union of India & Ors., AID No. 16 of 2022
Date: 18.01.2023
Citation: 2023 LiveLaw (Cal) 17