Allowing another appeal against the refusal of patent application on the ground of lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970, the Delhi High Court pointed out the flaws in obviousness analysis carried out by the respondent Controller while refusing the application [5222/DELNP/2012] of Emitec for patent titled ‘Tank Assembly And Metering System For A Reducing Agent’.
In Emitec Gesellschaft Fur Emissionstechnologie MBH vs Controller General of Patents. Designs & Trademarks & ANR.[C.A.(COMM.IPD-PAT) 465/2022], the Delhi High Court examined the impugned order to find whether the Controller had followed the ‘5-step Hoffman Test’ directly or in essence, to return the findings regarding lack of inventive step under Section 2(1)(ja) of the Patents Act. The Court found that Steps 1, 2 and 5 of the 5-step test proposed by the Delhi High Court in Cipla Ltd. vs F. Hoffmann-La Roche Ltd. & Anr., were evidently not followed by the Assistant Controller in this case.
Case of the Appellant
The counsel for the appellant explained that the invention related to a device for providing a liquid reducing agent, wherein the reducing agent tank has a separate chamber formed in the tank bottom above the main bottom plane, the chamber being a sub-volume not filled with reducing agent and housing a dosing unit with a pump for extraction. This structural configuration was central to the invention. Explaining the benefits of such an arrangement, the counsel for the appellant contended that the claimed arrangement eliminated the need for conventional extraction pipes extending from the tank top and for negative suction pressure.
According to the appellant, the ease of maintaining and replacing the dosing unit without dismantling the tank, even when the tank is full, clearly demonstrated the technical advancement and economic significance of the claimed invention. The appellant contested that the cited documents D1 to D6, either individually or in any possible combination, disclosed or suggested (a) a separate chamber in the tank bottom that is free of reducing agent and (b) a dosing unit with a pump fully disposed within such a chamber.
The appellant further argued that the objections under Section 2(1)(ja) relied on 6 prior art documents without identifying any motivation for selecting or combining them. According to the appellant, an ordinarily skilled person in the art would not be led to consult or combine these documents to arrive at the claimed configuration. The appellant submitted that such an approach amounted to impermissible hindsight reconstruction. Therefore, the impugned order was unsustainable and deserved to be set aside.
Reply of the Respondent
The respondent Controller maintained that claims 1-18 lacked inventive step in view of prior art documents D1 to D6, particularly D2 and D3, which were examined in detail and also relied upon in the corresponding EP examination. The respondent submitted that a person skilled in the art would find it obvious to relocate the seal or housing in D2 to place the pump entirely within the separated chamber. Such modification did not involve technical advancement but was a routine workshop variation. Additionally, claims 2-18 did not add any technical feature which, in combination with claim 1, could confer inventive step.
The respondent submitted that they merely related to obvious design variations. According to the respondent, documents D1, D4, D5, and D6 were also relevant and further supported the conclusion of obviousness. However, detailed reliance on these documents was unnecessary given the clear disclosures in D2 and D3. The respondent maintained that the claimed invention was obvious to a person skilled in the art in view of D2 and D3, and claims 1-18 did not satisfy Section 2(1)(ja) of the Patents Act.
Court’s Analysis and Findings
The Court reviewed the impugned order and found that the respondent Controller had refused the application for reasons that the subject matter of claims 1-18 was obvious to a person skilled in the art and hence lacked inventive step under Section 2(1)(ja) in view of cited documents D1-D6. The Court found that, in the inventive step analysis, the Controller merely listed the prior art D1-D6 and immediately discussed the invention, i.e., the liquid reducing agent disclosed in prior art D2. The Court also found that the respondent Controller referred to the paragraphs and drawings of D3 and D4. It stated that the subject matter claimed in claim 1 of the complete specification of the Subject Patent Application was known in the prior art.
The Controller then identified the difference between Claim 1 and D2. Further, the Controller stated that Claim 1 was also implicitly disclosed in the D3 and concluded that Claim 1 was not inventive, and that the dependent claims 2-18 lacked any feature possessing an inventive step. The Court observed that from the inventive step analysis attempted by the Assistant Controller:
“it was clear that while assessing inventive step, the Controller has not identified the person skilled in the art relevant for the inventive step assessment in the present case (Step No. 1) or has not identified the inventive concept embodied in the Complete Specification of the Subject Patent Application (Step No. 2); instead Controller straight away is identifying the relevant prior arts D1 to D6, constituting the common general knowledge, without even discussing how they relate to the Subject Patent Application (Step No. 3). Thereafter, the invention claimed in the Subject Patent Application is differentiated from the prior arts D2, D3 and D4. (Step No.4) and concludes the invention claimed in the Subject Patent Application lacks inventive step (Step No.5).”
The Court found that, without identifying the inventive concept of the subject patent application, the respondent Controller failed to address the technical problem the application sought to solve, the technical features claimed to solve it, and the technical advantages achieved by the invention claimed. The Court also noted the failure of the respondent to identify the person skilled in the art in whose perspective the inventive step was to be assessed. According to the Court, the impugned order failed to assess the threshold of inventive step by determining whether the invention claimed in the subject patent application was obvious to a person skilled in the art, possessing common general knowledge, in view of the prior art D1-D6.
Thus, the impugned order failed to address these essential questions as required under the 5-step test set out by the Division Bench of the Court in F. Hoffmann-La Roche Ltd. vs Cipla Ltd. In view of the findings above, the Court ruled that the impugned order failed to comply with the procedural requirement while returning a finding regarding lack of inventive step under Section 2(1)(ja) of the Patents Act.
Court’s Decision
The Court allowed the appeal and set aside the impugned order, directing the respondent Controller to conduct a fresh analysis of the objection under Section 2(1)(ja) of the Patents Act, in accordance with the 5-step Hoffmann Test, to determine the inventive step, and remanding the matter to the Patent Office.
Takeaways
This case again highlights the flaws in the inventive step analysis carried out by the Respondent. The Court in this case once again stressed the importance of following the “5-step Hoffman test” in assessing inventive step. The Court categorically stated that, as of now, the only test in India for inventive step analysis is the 5-step Hoffmann test, a position recently affirmed by the Division Bench of this Court in Tapas Chatterjee vs Controller of Patents & Designs. This means that the Patent Office must follow the named precedence in determining inventive step in similarly placed cases in the future.