Facts of the Case

The Appellant filed Patent Application No. 7529/DELNP/2014 as a national phase application derived from a PCT application for an invention titled “Plastics Material Strapping Band and Method for Producing a Plastics Material Strapping Band.” The invention relates to plastic strapping used for packaging and securing articles.

The Assistant Controller of Patents and Designs refused the application under Section 15 of the Patents Act, 1970, citing non-compliance with Section 2(1)(ja) (lack of inventive step) and Section 10(4) (insufficient clarity and disclosure).

The refusal was primarily based on prior art documents (D1 and D2) and alleged vagueness in claim language and absence of working examples.

Issues Involved

  1. Whether the rejection of the patent application under Section 10(4) for lack of clarity and absence of working examples was justified.
  2. Whether the invention lacked an inventive step under Section 2(1)(ja) in view of prior art D1 and D2.
  3. Whether the Controller’s order satisfied the requirement of a reasoned decision under patent law.

Petitioner’s Arguments

  • The Appellant contended that the objection under Section 10(4) was misconceived as the use of terms like “about” and “approximately” was scientifically justified due to measurement uncertainties.
  • It was argued that the invention was sufficiently disclosed, including the best method of performance, and thus met statutory requirements.
  • The Appellant emphasized that working examples are not mandatory for non-chemical inventions.
  • Regarding inventive step, it was submitted that D1 and D2 relate to different technical teachings and cannot be combined logically.
  • The invention involved a specific composition of polyester, polyolefin, and fibre material, which was neither disclosed nor suggested in prior art.

Respondent’s Arguments

  • The Respondent argued that the claims lacked definitiveness due to vague expressions like “approximately” and “one or more articles.”
  • It was contended that the application lacked working examples, which are necessary to establish patentability.
  • The Respondent relied on the Patent Office Manual to argue that examples/drawings are essential for proper disclosure.
  • It was further argued that the invention lacked inventive step as it was obvious in light of prior art D1 and D2. 

Court’s Findings / Order

  • The Delhi High Court held that the rejection under Section 10(4) was unreasoned and unsustainable, as the Controller failed to consider the explanations provided by the Appellant.
  • The Court clarified that working examples are not mandatory, especially for non-chemical inventions, and absence thereof does not automatically justify rejection.
  • On inventive step, the Court held that D1 and D2 relate to different problems, and their combination by the Controller was arbitrary and amounted to improper “mosaicing.”
  • The Court found that the Controller failed to analyze the Appellant’s response and merely reproduced objections without reasoning.

Final Order:

  • The impugned order dated 20th July 2020 was set aside.
  • The matter was remanded back to the Controller for fresh consideration within three months.

Important Clarifications

  • Use of approximate terms in patent claims is permissible when scientifically justified.
  • Working examples are not mandatory for all inventions, particularly non-chemical ones.
  • Prior art cannot be arbitrarily combined unless a person skilled in the art would realistically do so.
  • Patent authorities must pass reasoned and speaking orders.

Sections Involved

  • Section 2(1)(ja), Patents Act, 1970 – Inventive Step
  • Section 10(4), Patents Act, 1970 – Specification Requirements
  • Section 15, Patents Act, 1970 – Power to Refuse Application

Link to download the order -  https://delhihighcourt.nic.in/app/showFileJudgment/SVN02052023CAP1142022_211827.pdf

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