Delhi High Court Flags Lack Of Criteria For Assessing 'Inventive Step' Under Patents Act; Says Patent Office Decisions Often Subjective

The Delhi High Court today raised concern over the office of the Controller General of Patents, Designs and Trade Marks “routinely” deciding applications for registration of patents, amid lack of any set criteria to assess 'inventive step' under the Patents Act, 1970.In order to be patentable, an invention has to demonstrate an inventive step in its creation, vis-à-vis earlier inventions/ prior art. Any product or process which is “obvious” when compared to prior art, is not patentable.The Court observed that this obviousness has to be examined from the “mythical eye” of a person skilled in the art and “unfortunately”, there are no guidelines to steer this process, in the Patents Act. “The result is that the Examiners in the office of the Controller General of Patents, Designs and Trade Marks routinely decide applications for registration of patents, as well as oppositions to such applications, in a rule of thumb manner, purely on the basis of their subjective opinions. This is, clearly, a thoroughly legally unsatisfactory position,” a division bench comprising Justices C. Hari Shankar and Ajay Digpaul said.The remarks were constrained after the Court noted that the Assistant Controller of Patents & Designs (AC) merely referred to all the prior arts cited before him and returned a finding that each of the prior arts, seen individually or in combination with one or more of the others, would enable a person skilled in the art to arrive at the process which the Appellant, Tapas Chatterjee, sought to patent.The Appellant had sought a process patent, titled “Recovery of Potassium Sulphate and other valuable products from Spent Wash leading to ZLD System”.His application was rejected by the AC on an opposition filed by the Council of Scientific and Industrial Research, asserting that the subject invention was not patentable under Section 3(d) “as the process of the impugned application does not involve any new reactant nor resulted in a new product”.The AC had further held that the subject invention was not patentable under Section 25(1)(e) as it was obvious from existing prior art and did not involve any inventive step.The High Court however observed that the AC adopted a mechanical approach and there was not even a whisper of explanation in its order as to how a person skilled in art would, by going through the prior art documents, individually or in combination, be in a position to arrive at the subject invention.“In the absence of any guidance or existing indicia on the basis of which the aspect of obviousness of the subject invention vis-a-vis prior art is to be gleaned, from the perspective of the person skilled in the art, orders such as the one passed by the AC in the present case can come to be passed, in which no explanation whatsoever is adduced for the finding that a person skilled in the art would be able to arrive at the subject invention from the teachings in the prior art,” the Court said.It conceded that there may be cases where obviousness of the subject invention is plain at a bare glance. However, “there may be cases in which it is not apparent, by a mere reading of the complete specifications of the prior art and the subject invention, that the latter is obvious to a person skilled in the art from the former. In such a case, in our view, it is incumbent on the Adjudicating Officer in the office of the CGPDTM, adjudicating on the application for grant of patent, to set out, clearly and explicitly, his reasons for holding that the teachings in the prior art document would by themselves suffice to enable a person skilled in the art to arrive at the claims in the subject invention,” the Court said.It then compared the independent claims of the subject patent with disclosures in prior arts and found that they are not even remotely similar, though certain intermediate stages may superficially appear to be so.It thus ordered the CGPDTM to re-examine the Appellant's application.Appearance: Mr. Pravin Anand, Ms. Prachi Agarwal, Ms. Arpita Kulshrestha and Ms. Elisha Sinha, Advs. for Appellant; Mr. Vijay Joshi, Mr. Kuldeep Singh and Mr. Shubham Chaturvedi, Advs. for R-1 Ms. Vindhya S. Mani, Mr. Ritvik Sharma, Ms. Naina Gupta, Mr. Bhuavan Malhotra, Ms. Surbhi Nautiyal, Ms. Harshita Agarwal, Mr. Devesh Aswal and Ms. Vedika Singhvi, Advs. for R-2Case title: Tapas Chatterjee v. Assistant Controller of Patents & DesignsCitation: 2025 LiveLaw (Del) 1259Case no.: LPA 836/2023Click here to read order

Delhi High Court Flags Lack Of Criteria For Assessing 'Inventive Step' Under Patents Act; Says Patent Office Decisions Often Subjective

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