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Madras High Court

Patent Year Book 2023-2024

  • Scope of ‘Diagnostic’ in Section 3(i) is not limited to in vivo or specific diagnosis.
    In a significant first-of-its kind judgment dated 12th October 2023, the Madras High Court clarified the scope of the word ‘diagnostic’ in Sec. 3(i) and rejected attempts to borrow from European Patent Convention (EPC) and decisions rendered thereunder. While interpreting the expression “any process for the diagnostic… or other treatment of human beings” basis text and context, the Court held that,
    • Treatment is provided to free/cure a person from disease and for prophylactic purposes, to alleviate pain, prevent aggravation of or to better manage a condition or disorder. Hence, ‘Diagnostic’ in Sec. 3(i) cannot be confined to treatment of human beings to render them free of disease.
    • Section 3(i)and pathology: The wordsmedicinal, surgical, curative, prophylactic and therapeuticare all specific methods of treatment of human beings. The generic expression “or other treatment of human beings” indicates that “treatment” is intended to be construed When viewed in context of association with “forms of treatment”, “diagnostic” should be limited to processes that disclose pathology for treatment of human beings.
    • Determinative Factor is whether the diagnostic test is inherently and per se capable of identifying the disease, disorder or condition for treatment of The label used for the test is not determinative and determination has to be on a case-to-case basis.
    • Construction of ‘Diagnostic’ in 3(i) cannot be curtailed by limiting the scope to in vivo diagnosis or definitive diagnosis. Expansion of the limitation is also not called for. The standard is to examine the claims, in context of Complete Specification, to determine whether it specifies a process for diagnosis for treatment. If so, even if such diagnosis is not definitive, it would be patent ineligible.
    • Screening v Diagnosis: If a screening test is capable of identifying the existence/ non-existence of a disease, disorder or condition and/ or the site, extent, severity or other aspects thereof for treatment of human beings, irrespective of whether the person concerned is asymptomatic or symptomatic, such screening test would qualify as diagnostic test, even when the same may be subject to confirmation by definitive

    The Court urged the legislature to consider restricting scope of the expression ‘diagnostic’ in Sec. 3(i) to in vivo processes and counter balancing by providing for compulsory licensing.

    Factually, in context of national phase application titled, “Fetal Genomic Analysis from a Maternal Biological Sample” related to non-invasive pre-natal testing, the Court set aside the rejection order of the Controller and noted that the claimed invention is per se incapable of identifying the existence or otherwise of a disease/ disorder/ condition, and further testing would be required. Determination of foetal fraction (proportion of cell free DNA in maternal blood that comes from placenta) in the claimed invention provides an indicator, which is relevant for further testing to arrive at a diagnosis.

    Case:strong> The Chinese University of Hong Kong & Anr v. The Assistant Controller of Patents & Designs, 2023 SCC OnLine Mad 6372

  • Writ Jurisdiction in patent matters: Right of action v. Cause of Action.

    In its judgment dated 03rd January 2024, in University Health Network v. Adiuvo Diagnostics Pvt. Ltd. & Ors, 2024 SCC OnLine Mad 185, the Court dealt with an interesting factual situation wherein the patentee/ fourth respondent had filed a National Phase application in Delhi patent office. Writ petitioner had filed a Pre-Grant Opposition (PrGO) with Delhi office on several grounds. The application and the PrGO was assigned to an officer based in the Chennai office. By order dated 19 July 2023, the PrGO was rejected, and patent was granted.

    In the writ filed by the opponent before the Single Judge, the fourth respondent raised issue of jurisdiction basis the fact that the appropriate filing office for application and the opposition, and the granting office was the Delhi patent office. Administrative exigencies which led to the application being heard by a Chennai officer cannot alter the appropriate office, Delhi High Court being the convenient forum. Upon dismissal of this objection by the Single Judge, fourth respondent filed the Writ Appeal. The Writ Appeal Court held that,

    • Jurisdiction for a writ under Article 226 has to be determined in terms of the said Article.
    • Irrespective of the location of the appropriate patent office, a High Court will have territorial jurisdiction if part of cause of action arose in its jurisdiction.
    • The writ petitioner (opponent) was carrying on its business in Chennai and would be affected by grant of the patent.
    • There is a difference between right of action (which can arise through the filing of opposition, refusal of the same and the consequential grant of patent) and cause of action (which can arise in Chennai where violations of principles of natural justice is said to take place). The appropriate patent office might be useful for place of appeal whereas the present was a writ action.
    • Further, the opponent is in Chennai and the patentee is located in Canada. The counsel for the parties have their offices in Chennai. Therefore, Madras High Court was also the forum conveniens.

    Seeing no grounds to interfere, the writ appeal was dismissed.

  • Factors for determining Inventive Step.

    In Kuraray Inc. & Anr. v. Assistant Controller of Patents & Designs, 2023 SCC OnLine Mad 7568, dated 29th November 2023, the Madras High Court dealt with a patent application rejection order. The order was based on sole ground of lack of inventive step.

    Relying on the Agriboard decision of Delhi High Court, Court noted that three elements should be borne in mind while conducting obviousness analysis: the invention disclosed in the prior art; the invention disclosed in the application; and the manner in which the subject invention would be obvious to a person skilled in the art.

    Court further noted that the invention disclosed in D1 prior art is intended to solve a different problem and a person skilled in the art would not be motivated to consider the use of a material suggested by D1 on a standalone basis for resolving the problem that the claimed invention is targeted to resolve.

    The application was directed to proceed to grant.

  • Patent eligibility of Business methods u/s 3(k)MHC lays down a test?

    In Priya Randolph & Anr. v. Deputy Controller of Patents and Designs, 2023 SCC OnLine Mad 7890, in the First Examination Report there were objection related to (i) inventive step and (ii) section 3(k)computer program per se. However, in the hearing notice, objections of (i) lack of sufficiency and (ii) ineligibility owing to invention being a business method were raised as pending objections. Patent application was finally rejected for the reason that it related to a business method. The Court noted that,

    The CRI Guidelines, which provide guidance but should not be construed as providing an authoritative interpretation of Section 3(k), indicate that a claim would be construed as a business method if the claim is, in substance, for a business method. On examining the appellant’s claims, especially independent claim 1, it appears that the claims are directed at concealing the physical address of the purchaser of goods in e-commerce transactions by deploying software, hardware and firmware for such purpose. While it is possible that the conduct of e-commerce in this manner may be part of the business method of an enterprise if the claimed invention were to be put to use, the monopoly claim is not in respect of a business method but in respect of a claimed invention deploying hardware, software and firmware for purposes of data privacy and protection. Therefore, the conclusion that the claimed invention relates to a business method is untenable.

    Basis the above reasoning, the Court set aside the impugned order and remanded the matter to patent office for reconsideration by a different officer.

  • Section 3(d) interpreted by MHC; Anti-evergreening bar not to apply if there is no known substance.
    In its judgement dated 20 December 2023, in Mr. Tony Mon George v. Deputy Controller of Patents & Designs, 2023:MHC:5451, the Court dealt with a rejection of an application relating to two polymorphic forms of RTA-408. The patent for RTA-408 had been granted in India. The publication date of the RTA-408 application was post the priority date of the polymorphic forms’ application. Two other prior arts were cited for demonstrating lack of inventive step and failure to cross threshold of Sec. 3(d). The Court noted that,
    • Section 3: Claims which fall within 3 will not qualify as inventions due to legal fiction, even if they meet requirements of Sec. 2(1) (j), unless they pass through the exemption filters built into some of the Sec. 3 clauses.
    • Section 3(d): 3(d) has 3 parts; first 2 parts deal with claims relating to known substances. The first part deals with new forms of a known substance and the second part deals with new uses/properties of a known substance.
    • Since, RTA-408 was published/ made known to public after priority date of the polymorph invention, it does not qualify as a known substance u/sec. 3(d).
    • The crystalline forms/polymorphs were not new forms of two other prior arts because chemical composition of the former was different compared to one of the prior arts and there were structural differences compared to the other prior art.
    • Inventive Step: Since RTA-408 application was not published before priority date of the invention, it could not be considered a valid prior art for determination of lack of novelty or lack of inventive step.
    • Further, 100+ compounds were possible from prior art D3 and there was no reason why a skilled person of the art would pick one compound TX-63682 therefrom and use that to arrive at RTA-408 by adding methyl substituent in position 4a, more so when there were several other compounds in D3 with lower IC valuesjust like for the subject invention.
    • Section 3(e) and Synergistic effect: Since there was no proof of synergy or composition being more than the sum of its parts, the composition claim failed test of Sec. 3(e) and was rejected.

    The other claims were allowed to proceed to grant.

  • Scope of Section 3(d), and interpretation of Section 3(e).
    In its judgment dated 20 September 2023 in Novozymes v. Assistant Controller of Patents, (T) CMA(PT)/36/2023, the Court laid down important rules for interpreting Secs. 3(d) and 3(e). Court was dealing with appeal from a rejection order in respect of an invention titled, “Phytase Variants with Improved Thermostability”. The rejection was primarily on grounds of Secs. 3(d) and 3(e). The Court held that,
    • Section 3(d): 3(d) does not apply only to pharmaceutical and agro-chemical substances. It can also apply to biochemical substances.
    • Test of efficacy would vary depending on the product under consideration.
    • The principle of ejusdem generis is applicable to the expression “and other derivatives of known substance” occurring in Explanation to Sec. 3(d). It covers all chemical derivates of a known substance. Hence, the Explanation is inapplicable to the claimed invention, which is for variants of a phytase, i.e., an enzyme/ biochemical. However, such invention still must cross hurdle of Sec. 3(d) since the Explanation does not apply to the provision in entirety.
    • Primary function of a phytase is to catalyse digestion but it does not mean that enhanced hydrolysis of phytate by variants of a phytase should be established as essential pre-requisite for demonstrating enhancement of known efficacy of Even increase in thermostability which precludes denaturation and enables production, storage and sale in pellet form, enhances the known efficacy of the enzyme.
    • In cases such as these, where Explanation does not apply, the Patent applicant must establish that there is a reasonable enhancement of efficacy, i.e., material enhancement from an improvement of efficacy perspective
    • Section 3(e): 3(e) applies to substances obtained by merely mixing two or more components/ ingredients and the produced substance must be more than the sum of the parts to cross the eligibility bar.
    • If any of the ingredients of the composition independently satisfies the requirements for an invention under the Patents Act, a patent may be applied for and granted in respect thereof notwithstanding 3(e).
    • Sec. 3(e) bar is not just limited to independent claims.

    Court held that the claimed invention satisfies test of Sec. 3(d), however some of the claims fail the test of Sec. 3(e). The rejection order was partly set aside, and the application was directed to proceed to grant basis the modified terms.

  • Consequences of breach of Sec. 39 in relation to Patent of Addition, where main invention was first filed in India.
    In Selfdot Technologies (OPC) Pvt. Ltd. v. Controller General of Patents, Designs & Trade Marks, 2023 SCC OnLine Mad 7520, the Appellant was a resident of India, and had secured a patent in India and in the US (through PCT route after first filing in India) for its main invention relating to a method for determining authenticity or tampering of a security label and the method of recording colour profiling in relation thereto. Thereafter, a Patent of Addition (PoA) relating to method for an automated authentication of the security label was filed directly with USPTO without obtaining requisite approval u/S. 39 (foreign filing license). After obtaining the PoA in US, appellant filed application for the same before IPO, where the same was deemed to be abandoned u/S. 40 due to Sec. 39 contravention.
  • The Court noted that “both the parent invention and the claimed patent of addition are not relevant for defence purposes or related to atomic energy”. Sec. 40 deals with substantive infractions of Sec. 39 and leads to drastic consequences. The purpose of the legal fiction of Sec. 40 is to prescribe consequences of a clear breach of Sec. 39, as opposed to procedural irregularities, and the scope thereof should not be extended beyond such purpose.

    In facts and circumstances of the case, appellant’s breach was considered, at worst, a technical breach but not such as would trigger deemed abandonment u/S. 40. The Controller was directed to deal with the application on merits while it could impose terms u/R 137 for the procedural violation by the appellant.

  • Date of assignment v. Date of declaration relating thereto, in context of right to file patent application(s).
    In its judgement dated 19th December 2023, a Single Judge clarified that there is a distinction between the date of assignment of patent rights by the inventors and the date of declaration relating thereto, and the same ought not to be conflated. The Court noted that,
    • Section 6 of the Patents Act sets out persons who are entitled to apply for a patent. Apart from the true and first inventor, the assignee thereof can also make an application for a patent.
    • Where application is made by the assignee, Section 7(2) of the Patents Act requires applicant to provide proof of right to make application, which as per Rule 10 of the Patent Rules must be done within 6 months from the date of filing of the patent application.
    • Where facts and circumstances, on a cumulative consideration, lead to inference that inventor’s assignment of right is prior to the declaration of the same, one must recognize the distinction between date of assignment and date of declaration, and a patent application ought not to be rejected on a conflation of the two dates.

    The appellant had filed a national phase application in India on 24 October 2014, arising from a PCT International Application of the year 2013. Declarations of assignment by the three inventors were filed subsequently before Indian Patent Office. One of the inventors had issued the declaration dated 07 February 2015, i.e., after date of filing of the patent application in India. Consequently, the patent office rejected the application for breach of Section 7(2). The Court considered that (i) the Appellant had made a declaration on 14 October 2022 asserting that inventors were in its employment and the invention was a work product in the course of employment and (ii) the inventors had filed declarations and the assignment before US Patent Office, wherein each had recorded that the assignee is entitled to claim rights in respect of the application filed before the US Patents Office and any corresponding foreign patent office. In these circumstances, the rejection order was set aside. The Court directed that the patent application be decided on merits within a period of four months from receipt of copy of the Court’s order.

    Case: NEC Corporation v. The Assistant Controller of Patents and Designs, 2023 SCC OnLine Mad 7894

  • Unreasoned orders by Patent Controllers/ Examiners set aside.
    • Mitsubishi Electric Corporation Assistant Controller of Patents and Designs, (T) CMA(PT)/11/2023, judgment dated 13 December 2023
    • In an appeal challenging the rejection order dated 28 February 2020 by the Patent Office, in respect of a National Phase patent application, the Madras High Court noted that,

      • Unreasoned Order: While dealing with grounds of lack of inventive step and ineligibility under section 3(k), the Controller/ Respondent recorded conclusions without providing cogent reasons in support thereof.
      • Consideration of same prior arts and grant by EPO material consideration: Controller did not consider “the fact that the same prior art documents were considered by the European Patent Office before granting patent”. While the grant by EPO is not conclusive or dispositive, it is a material consideration that should have been considered while deciding the patent application.
      • Computer programs and section 3(k): Basis judgments of Delhi High Court, the Court noted that not all computer programs are patent ineligible under Section 3(k).

      Since impugned order did not consider the above aspects, it was set aside and the matter was remanded back for reconsideration by a different officer.

    • On similar basis, in Microsoft Technology Licensing, LLC The Controller of Patents and Designs and Anr., CMA(PT) No. 21 of 2023 and CMP No. 17945/2023, dated 20 September 2023, the Court once again set aside the rejection order and remanded the matter back for reconsideration by a different officer. The Court noted that the impugned order reproduced two paragraphs of prior art documents D1 and D2, and recorded conclusions without any reasoning and without considering submissions of the appellant/ applicant in relation to lack of inventive step. Further, the EPO had considered the same prior arts and granted the patent. The test of obviousness being common across jurisdictions, consideration of same prior arts and grant of patent by EPO was a material consideration which was overlooked.
    • The aspect of unreasoned conclusions in context of lack of inventive step and insufficiency of disclosure have also been dealt with in Saint Gobain Abrasives, Inc. & Anr. The Controller of Patents and Designs, 2023:MHC:5186, wherein the application rejection order was set aside and the matter was remanded back for reconsideration.
  • Procedural lapses, non-filing of condonations, and the manner of claims cannot be reasons to reject a patent application.
    In Huawei Technologies Co., Ltd. v. The Controller of Patents, CMA (PT)/5/2023 and C.M.P. No. 15804/2023, dated 19 September 2023, the Madras High Court noted that the patent application was not dealt with on merits. Rejection on the ground that method claims were not presented in proper form was held to be untenable when all device claims were deleted, and one claim was repeated due to clerical error. The Court noted that procedural lapses such as misnumbering of patent claims; or non-filing of petition to condone delay in filing Form 3 do not justify rejection of patent application. The rejection order was set aside, and the matter was remanded for reconsideration.
  • New grounds cannot be taken in refusal order by the Controller.
    In Monsanto Technology LLC v. Union of India & Ors., WP No. 15578 of 2017, dated 09 June 2023, there were 23 observations in the First Examination Report, which were narrowed down to 9 paragraphs in the Hearing Notice issued by the Patent Office. However, the impugned order rejecting the Patent Application drew reference to grounds under Section 10(4)(a), (b) and (c) of the Patents Act.
  • The Madras High Court noted that because of Controller’s failure to set out the scope of inquiry in the hearing notice, the petitioner was denied the opportunity of meeting objections at the hearing. Further, the order had a finding in relation to an objection which was not raised in FER or in the hearing notice. For these reasons, the Court allowed the writ, quashed the order, and remanded the matter for reconsideration by the Patent Office.

  • It is against natural justice for Controller to rely on an Opposition Board’s report that did not consider all evidence submitted by parties.
    Petitioner was granted a patent, and the 4th Respondent filed a Post-Grant Opposition (PoGO) thereto. Petitioner did not submit evidence while filing Reply Statement to the opposition. The opponent submitted additional evidence with its Rejoinder. On 27 May 2019, the Opposition Board submitted its recommendations. Petitioner filed expert affidavit on 17 June 2020 and the same was rejected. Petitioner filed a writ during pendency of which Controller permitted the additional evidence, i.e. the affidavit, same being done on 12 November 2020. Opponent also filed further evidence thereafter. Petitioner filed request for claim amendment on 03 February 2023, which was notified in Patent Office Journal on 11 July 2023. Impugned Hearing Notice was issued on 09 August 2023.
  • Court noted that both parties were permitted to file evidence after Opposition Board’s report. Since the Board never considered such evidence, it would be meaningless for the Controller to decide basis such a report. For ensuring natural justice, the additional evidence of both parties must be considered by the Opposition Board. The Court also directed reconstitution of the Board to avoid confirmation bias. It also directed opposition to be decided in a timebound manner.

    Case: Optimus Drugs Private Limited v. Union of India, 2023 SCC OnLine Mad 8013

  • Test of Inventive Step & Who is Person Skilled in the Art
    • In judgment dated 31 January 2024, in Rhodia Operations Assistant Controller of Patents and Designs, 2024:MHC:6024, a Single Judge was dealing with appeal from an order rejecting the patent application on ground of lack of inventive step. While agreeing with the rejection order and dismissing the appeal, the Court elucidated several concepts in relation to the test of inventive step:
      • Test of Inventive Step: Basis survey of judgments dealing with inventive step in Indian and UK courts, court noted that “the inventive step inquiry should be carried out in the following manner: (1) identify the person skilled in the art; (2) identify the common general knowledge to be imputed to the person skilled in the art; (3) identify the inventive concept embodied in the claimed invention; (4) identify the differences between the prior arts and the claimed invention; and (5) decide whether those differences would be obvious to a person skilled in the art”.
      • Court began with identifying the inventive concept embodied in the invention since technical advance or economic significance requirement was, in view of the Court, an essential pre-requisite in obviousness analysis under Section 2(1)(ja). It noted that the claimed invention disclosed features not found in any of the cited prior arts thus satisfying the technical advance requirement. Question waswho is the Person Skilled in the Art and would the technical advance be obvious to such person?
      • Person Skilled in the Art: Person skilled in the art (PSITA/PSA) is a hypothetical person created by The law requires that obviousness analysis be carried out by slipping into the shoes of this notional person. Patents Act does not define the person skilled in the art or prescribe the attributes of such person.
      • Level of PSA’s skill: 2(1)(ja) does not place any qualifier such as good, excellent, extraordinary etc. before the adjective “skilled”. In context of sufficient enablement of invention, Patents Act requires a different notional person who is in India, possess average skill in and average knowledge of the art to which the invention relates. However, u/S 2(i)(ja) the PSA could be anywhere in the world, including India.
      • For inventive step, “Skilled” is an adjective qualifying the noun “person”. As per dictionaries, it implies “person having the ability to do a job, task or activity well”. The statute does not use words that indicates enhanced levels of skills nor words that indicate a low or average level of Hence, a PSA is a person whose skill is good/ greater than average and such a person possess the skill to do the job well.
      • Attributes of PSA and difference in relation to real skilled person: Depending on the art, educational/ academic or vocational qualifications are likely to be required. Work experience would certainly be required because one does not ordinarily describe a person with the requisite educational qualifications but no work experience as skilled in the art. Such person would also be adept at using tools of the A level of knowledge that a real person skilled in the art is unlikely to possess is imputed to the hypothetical person due to public policy requirement of not granting monopolies over matters previously known or obvious. Such imputation of knowledge is not, however, unqualified and is restricted to matters previously known in the art in which such person or team of persons is skilled. Further, legislative intent is not that the PSA should be omniscient. Further, banishing imagination in the notional person is not justified. PSA is not a person with inventive capability. Except to the extent that statutory prescription or the underlying public policy call for a departure from the characteristics of a real person skilled in the art, the notional person should, in my view, mirror a real person as closely as possible.
      • Is it always necessary for the adjudicator to identify the person skilled in the art? Court noted that “if the patent applicant and the relevant patent office agree on the person skilled in the art, identification by the adjudicator is not By contrast, whenever there is disagreement, the adjudicator has to identify the person skilled in the art”. To do so, “the obvious starting point is the field of the claimed invention. Sometimes the person skilled in the art can be readily identified from the field of invention” and “depending on the nature of the claimed invention, the person, or team of persons, skilled in the art could be from a specific industry or industries or be proficient in technology with use cases in multiple industries”.
      • Mosaicing: Express reference or cross reference in prior arts is not It is sufficient if there is teaching, suggestion or motivation in the prior art.
      • A mere workshop improvement does not satisfy the test of inventiveness.
      • Combination v. juxtaposition or aggregation: Court noted that “invention claimed must normally be considered as a whole”. For a “claim consisting of a ‘combination of features’, it is not correct to argue that the separate features of the combination taken by themselves are known or obvious and that ‘therefore’ the whole subject-matter claimed is However, where the claim is merely an ‘aggregation or juxtaposition of features’ and not a true combination, it is enough to show that the individual features are obvious to prove that the aggregation of features does not involve an inventive step. A set of technical features is regarded as a combination of features if the functional interaction between the features achieves a combined technical effect which is different from, e.g. greater than, the sum of the technical effects of the individual features. In other words, the interactions of the individual features must produce a synergistic effect. If no such synergistic effect exists, there is no more than a mere aggregation of features…
      • The Court quoted with approval the following principles to be borne in mind while deciding whether the person skilled in the art would combine the prior arts: The suggested motivation to combine is extracted below: “1) in the prior art references themselves; 2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or 3) from the nature of the problem to be solved, leading inventors to look to references relating to possible solutions to that problem”.
      • Analogous Prior Arts: After analysis the prior arts relied upon in the impugned order, i.e., D5 and D6, court noted that both prior arts were in the same field as the claimed invention, and both were published before the priority date of the invention. Hence, they were analogous prior arts.
      • Differences between prior arts and the invention: Court found that barring one “conspicuous absentee”, many features of the invention were found in D5, while the “absentee” feature was found in The question wasWould the PSA combine these prior arts?

      Applying the above principles to the case, the Court noted that “while D5 recites the use of polyamide or a mixture of polyamide and polyolefin as an optional barrier layer, there is no teaching away from the use of polyamide or a combination of polyamide and polyolefin as a barrier layer. From the teachings of only D5, a person skilled in the art would look at using HDPE and a barrier layer of only EVOH or a barrier layer that combines EVOH and polyamide/ mixture of polyamide and polyolefin. D6, however, not only teaches the use of novolac resin, but demonstrates the benefit of combining a polyamide, such as nylon 66, with a novolac resin. This tilts the balance. Indeed, even the ethylene-propylene-diene impact modifier (EPDM) disclosed in D6 is referred to at internal page 10 of the complete specification of the claimed in vention. Therefore, in my view, when armed with the knowledge of both D5 and D6, while looking for a solution to the problem of permeability of fluids, it would be obvious to a non-inventive person skilled in the art and starting from D5 to combine the elements therein, particularly polyamide and polyolefin, with novolac resin to achieve higher impermeability, especially in respect of gasoline, and it would be a matter of routine experimentation to arrive at the claimed invention. I am bolstered in this conclusion by the fact that there are not many options in the realm of engineering plastics and the problem to be solved does not call for more expensive options such as the use of high performance polymers”.

      Accordingly, Court concluded that “the claimed invention would be obvious to a person skilled in the art on the basis of D5 viewed in the context of D6”.

    • Microsoft Technology Licensing LLC Assistant Controller of Patents and Designs, 2024:MHC:1009
    • In this judgment dated 28 February 2024, a Single Judge was dealing with an appeal from an order rejecting a patent application on ground of lack of inventive step. The Court noted that,

      • The assessment of inventive step of a claimed invention is to be made by a two-step process:
      • identification of feature(s), if any, that involve technical advancement over prior knowledge or having economic significance or both; and
      • determination of whether the technical advance or economic significance or both of said feature(s) makes the invention not obvious to a person skilled in the art.
      • Person Skilled in the Art: Section 2(1)(ja) underscores the centrality of the person skilled in the art (PSITA). The obvious starting point in identifying PSITA is the field of invention, which is enabling applications in computers to receive sensor data by way of lightweight The PSITA would, therefore, be a software engineer with an understanding of hardware/computer electronics. As regards level of skill, relying on Rhodia Operations v. Assistant Controller of Patents & Designs, 2024:MHC:6024, Court noted that the level of skill of the PSITA is above average/good and that she possesses the skill set to do the job well. Further, she is not omniscient, and that ingenuity or inventiveness cannot be attributed to her since the object of the exercise is to determine whether the claimed invention contains an inventive step.
      • Inventive Step assessment: Court inferred that the solution provided by the claimed invention is the conversion of raw sensor data into messages that are transmitted to the subscribing application and may be easily read by such application. By contrast, the cited prior art does not envisage the conversion of raw sensor data into easy-to-read messages. Court agreed that both the cited prior art and the claimed invention provide for the transmission of sensor data to a subscribing application, but the difference lies in the manner in which such data is Question is whether the difference between the cited prior art and the claimed invention would be obvious to a person skilled in the art.
      • The difference D4 and the claimed invention is the manner in which sensor data is transmitted.
      • To ascertain whether prior art D4 contains teaching, suggestion or motivation to lead the PSITA to the claimed invention, it is important to closely examine the problem that D4 sets out to solve.
      • Court found that the problem addressed by the prior art and the claimed invention was different and even otherwise the recitals and disclosures in D4 do not suggest or motivate, much less teach, the PSITA to arrive at the claimed invention. Consequently, the claimed invention will not be obvious to PSITA because arriving at the claimed invention from D4 requires ingenuity and not mere skill in the art.

      Court also noted that width of the claims needs to be whittled down to confine the scope of the monopoly claim. After suggesting amendment in respect thereof, the Court set aside the impugned order and directed grant of the patent subject to amendment of the independent claims as indicated by it.

Patent Yearbook Editorial team:

Ms. Sneha Jain, Dr. Victor Vaibhav Tandon, Ms. N. Parvati, Mr. Ayush Saxena

Disclaimer: This Yearbook is for informational purposes. It does not in any manner amount to legal advice. It is not intended for advertising or soliciting.

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