India: High Court overturns a refusal order, emphasizes the need to update IPO's Practice Manual
A recent decision by the Delhi High Court (hereinafter referred to as “the Hon’ble Court”), in AGFA NV & ANR. vs The Assistant Controller of Patents and Designs, has highlighted the need to update the Manual of Patent Office Practice and the examination procedure in India. The Hon'ble Court emphasized that the increasing number of patent filings in India, particularly in complex areas like artificial intelligence systems, machine learning, agro-chemicals, pharmaceuticals, and manufacturing methods, necessitates better guidance for Examiners and Controllers when dealing with objections of lack of clarity and succinctness.
The case involved an appeal filed by AGFA NV under Section 117A of the Indian Patents Act (hereinafter referred to as “the Act”) against the refusal order of the Assistant Controller of Patents and Designs (hereinafter referred to as “the Controller”), in the matter of Indian patent application number 201617023479 (hereinafter referred to as the “subject patent”) titled “Manufacturing of Decorative Laminates by Inkjet” on 8th July, 2016.
The Patent Office issued a First Examination Report (hereinafter “Office Action”) on 27th April, 2019 wherein, objections under Sections, 2(1)(j), 2(1)(ja) as well as Sections 10(4) and 10(5) of the Act were raised. The Applicant responded by filing a detailed response along with an amended set of claims on 11th July, 2019. Subsequently, a hearing was fixed on 21st March, 2022, retaining the objections as mentioned in the Office Action. Thereafter, the Applicant filed written submissions along with an amended set of claims on 1st April, 2022, and consequently the Patent office ultimately refused the subject patent application on the grounds of Sections 10(4)(c) and 10(5) of the Act as the expressions and terms such as ‘thermosetting resin’, ‘ink acceptance layer’, ‘inorganic pigment’ and ‘polymeric binder’ in the claims of the subject patent application were not clear and succinct and the scope for protection of the invention had not been clearly defined and the amended claims were not patentable in terms of Section 2(1)(ja) of the Act.
Hon'ble Court’s observations:
Objection on Lack of Clarity
In respect of the objection under Section 10(4) of the Act, the Hon'ble Court noted that ‘ink acceptance layer’, in the laminate manufacturing industry, the said layer was given different references, which included ‘ink receiving layer’ and ‘ink coating layer’ and in the subject patent, the ‘ink acceptance layer’ had been given a definitive dry weight between 3 g/m2 and 6 g/m2 in the claims. Additionally, the Hon'ble Court observed that the terms of the subject patent application (‘thermosetting resin’, ‘an ink acceptance layer’, ‘inorganic pigment’, ‘polymeric binder’) that had been held to be vague, had been sufficiently described in the filed complete specification. Further, even preferred embodiments for the said terms or expressions were provided in the complete specification. The Hon'ble Court also observed that the impugned order failed to consider that the patent specification is intended for a person skilled in the art, to whom the terms in the claims would be clear. Therefore, the objections regarding lack of clarity or indefinite claims were deemed invalid.
Objection on Lack of Succinctness
The Hon'ble Court observed that there was no specific reasoning given by the Controller for the lack of succinctness in the Claims. The Hon'ble Court further remarked: “I observe that even the Manual of Patent Office Practice and Procedure, dated 26th November, 2019, issued by the Office of the Controller General of Patents, Designs and Trademarks does not give any guidance on what constitutes succinctness or how to identify lack of succinctness.” To address this, the Hon'ble Court referred to the Patent Manual of Practice and Procedure issued by the IP Office of Australia, which gave guidance that under the following two conditions, the Claims could lack succinctness:
● An individual claim was considered unnecessarily lengthy;
● The statement of claims was considered unnecessarily lengthy due to the repetitious nature of the claims.
The Hon'ble Court noted that in the present case, the first claim was lengthy but by no means unnecessarily lengthy as it was defining specific features and expressions that were interlinked to each other. The Hon'ble Court further added “Considering that it is the right of the patentee to draft Claims so as to protect all the aspects and features of the invention sought to be protected, the present set of Claims, in my opinion, cannot be said to lack succinctness”.
Reliance was placed on Doric Products Pty Ltd v. Lockwood Security Products Pty Ltdwherein it was noted that:
“I accept that it takes patience, time and effort to unravel all of the claims of the Patent. Subject to the expenditure of that time and effort, there is no alleged ambiguity in the claims. The problem is not with prolixity, but with attempted compression, and the multitude of claims. That, however, falls short of establishing that the claim or claims are not clear and succinct."
Objection on Lack of Inventive Step
With regard to rejection on the ground of lack of inventiveness under Section 2(1)(ja) of the Act, the impugned order of the Controller held that one of the features in claim 1 was within the range disclosed in one of the prior art documents. However, the Applicant was able to successfully argue that ‘application weight’ was stipulated in the Independent Claim 1 which was varied from and ‘total dry weight’.
Objection based on “Common general Knowledge”
The Hon'ble Court opined that for the Controller to rely on ‘common general knowledge’ as a ground for refusing a patent application, it was essential to specify the source of the said knowledge. It would be essential that the said source of the ‘common general knowledge’ should be published before the priority date of the patent application. In addition, the fact that a theory, principle, or knowledge had become common knowledge needed to be substantiated by some evidence. The said evidence could be in the form of references to ‘common general knowledge’ textbooks or research articles or standard documents.
The Hon'ble Court further noted that in the present case, the Controller had failed to give any source of the common knowledge that had been considered. Therefore, the Hon'ble Court opined that it could not be construed as to what precise element of ‘common general knowledge’ had been considered along with the cited prior art to claim that the combination of the teachings of the prior art and the ‘common general knowledge’ led to a finding of lack of inventive step.
The Hon'ble Court also noted that the corresponding patent application had been granted in various jurisdictions including the USA, UK, Australia, China, and various countries in Europe.
Hon'ble Court's Judgment and Recommendations:
In the light of the above, the impugned order was set aside, and the Patent Office was directed to proceed to grant the patent, subject to completion of necessary formalities. The Hon'ble Court further recommended the Office of the Controller General of Patents, Designs and Trademarks to update or revise the Manual for Practice as this would ensure that the Examiners and Controllers could be better equipped to ascertain aspects like clarity and succinctness of inventions. The Hon'ble Court further opined that it might also be appropriate to give adequate technical and patent analytics training to the Examiners and Controllers.