Enablement Requirements Redefined By The Delhi High Court

The Delhi High Court, while dealing with an appeal filed against a Controller’s order has redefined the working example requirement in the complete specification. These clarifications are provided by the court in the matter of Titan Umreifungstechnik GMBH and Co. KG versus Assistant Controller of Patents and Designs as Anr.

Titan Umreifungstechnik GMBH and Co. KG (hereinafter referred to as “the Applicant”) filed application no. 7529/DELNP/2014 as a national phase application of PCT/EP2012/069237 for the invention titled “Plastics Material Strapping Band and Method for Producing a Plastics Material Strapping Band (hereinafter referred to as “the Application”). During the prosecution of the application, the Controller vide order dated 20 July 2020, has refused the application on two grounds, (1) non-fulfilment of requirements under section 2(1)(ja) (lack of inventive step); and (2) non-compliance with section 10(4) of the Act (lack of definitiveness and lack of enablement).

After hearing the arguments of both parties, the Hon’ble Delhi High Court concluded that the Controller has erred in refusing the application on these grounds. While assessing the lack of definitiveness rejection, the Court observed that the Controller has held that the claim is vague as it mentions an approximate value. Claim 1 of the application defines the weight of the constituent elements of the plastic strapping band as approximately 90% of polyester, 1% to 5% of polyolefin and 5% to 10% of fibre material.

The court observed that the complete specification sufficiently explains the rationale for using approximate values to signify the proportions of constituent elements. It is explained in the specification that ‘about’ in the weight specification conveys that the determination of individual components is typically done with the help of differential scanning calorimetry. Further, proper reasoning has been provided in the complete specification regarding the content of polyolefin and fibre material in the claimed composition.

Regarding the use of the phrase “one or more articles” it is explained that the application relates to a plastic strapping band used for wrapping around ‘one or more articles’ to combine, stabilize and hold the articles and that this phrase is commonly used in the packaging industry. The court also considered that similar worded claim specifications have been accepted for the same invention in the European Union, Australia, Canada and the United States. The court thus held that the Controller has not dealt with any of these factors and therefore, the order with respect to this rejection is unreasoned and unsustainable.

The Controller has also refused the application due to a lack of working examples in the specification. It was argued by the counsel representing the Controller that the application must contain examples/drawings, irrespective of the nature of the invention, as mentioned in clause 05.03.09 of the Manual of Patent Office Practice and Procedure. The court did not find this argument convincing. The court believed that while assessing the sufficiency of disclosure, it must be ensured that the best method for performing the invention known to the applicant is described.

The primary requirement is that the application includes a clear and complete description of the invention, its operation, use and method by which it is performed so that a person skilled in the relevant field can reproduce the invention based on the description in the application. The question for consideration before the court was “whether this condition is to be mandatorily followed in all applications.” The counsel representing the applicant while refereeing to the same clause, 05.03.09 of the Manual of Patent Office Practice and Procedure, pointed out that there is no mandatory requirement to provide examples for non-chemical related inventions. It is clearly mentioned in said clause that furnishing of working examples is an essential condition only in the case of chemical-related inventions.

The court thus held that the Controller’s reliance on Clause 05.03.09 of the Patents Manual is flawed as the applicant’s invention is not a chemical-related invention. The court further clarified that; indeed, a patent application can be refused if the invention is not sufficiently disclosed in the complete specification and to satisfy himself, the Controller could have asked the applicant to prove that the description in their claims is supported with workings; however, mere absence of working examples does not render the subject application liable for rejection. As per Section 10(4)(b) of the Patents Act, an applicant is required to disclose the best method of performing the invention known to them for which they are claiming monopoly.

The court observed that this requirement was fulfilled as the applicant had provided the best method of performing the invention in the complete specification. The court strongly observed that instead of analysing the same, the Controller insisted on working examples in support of the subject application and summarily rejected the claimed invention on the ground of Section 10(4) of the Patents Act, without elaborating on the reasons for arriving at such a conclusion. Thus, this ground of rejection by the Controller was found not sustainable by the Court.

Similarly, the court also found flaws in the Controller’s reasoning regarding the lack of inventive steps in view of cited prior art D1 and D2. The Controller opined that since the applicant has failed to provide any technical advancement in comparison to the closest prior arts, the claims of the application lack inventive steps. The court observed that cited documents D1 and D2 address different problems, and thus, it would not be plausible for a person skilled in the art to realistically combine the teachings of the referenced prior art. Therefore, the court held that it was inappropriate for the Controller to combine or ‘mosaic’ two substantially unrelated prior arts to invalidate the claims of the application.

Further, the applicant has distinguished the claims with respect to the cited prior arts while filing a written submission after the hearing. The court observed that the objections relating to D1 and D2 were raised in the second Hearing Notice dated 11 May 2020 and the same has been verbatim reproduced in the order passed by the Controller, without even referring to the response of the applicant provided in the written submission. The Controller has not provided any logical reasoning as to how the teachings of the combination of D1 and D2 would be obvious to a person skilled in the art. Thus, the court held that this ground of rejection is also not sustainable.

This decision of the Delhi High Court has once again given a ray of hope to the applicants that any such nonreasoned order if issued by the Controllers may not be a hurdle in getting a grant of patents. In this decision once again, a message has been conveyed to the Controllers that while refusing any application, they must be more objective in nature and all the submissions made by the applicants should be carefully considered, before issuing any decision. Also, this is going to be one of the important cases which has defined very clearly the working example requirement in non-chemical inventions.

It has been observed that generally, the Controller insists on providing working examples in the application irrespective of the nature of the invention. Now, by this decision, this has been redefined by the Court that the mere absence of working examples does not render the subject application liable for rejection. It has been clarified by the court that the applicants need to disclose the best method for performing the invention known to them. This decision will hopefully bring in more objectivity for the assessment of enablement requirements under the Act, and the Controller will now act more judiciously while refusing any application on this ground.