Observing that the number of Patent filings in India are rapidly increasing and there is an imminent need to update the Manual of Patent Office Practice and Procedure so that Examiners and Controllers can get better guidance on dealing intricate matters like objections of lack of clarity and succinctness, the Delhi High Court has held that such updation would be particularly useful when dealing with complex patents involving Artificial Intelligence systems, machine learning functions, agro-chemicals, pharmaceuticals and manufacturing methods.

While considering an appeal filed under Section 117A of the Patents Act, 1970 preferred against the order of the Assistant Controller of Patents and Designs, Indian Patent Office, Delhi refusing the grant of patent in respect of a patent application filed by the Appellants, the Single Judge Bench of Justice Amit Bansal said that “I would recommend to the Office of the Controller General of Patents, Designs and Trademarks to update or revise the Manual for Practice. This would ensure that Examiners and Controllers can be better equipped to ascertain aspects like clarity and succinctness of inventions. It may also be appropriate to consider giving adequate technical and patent analytics trainings to Examiners and Controllers”.

Advocate Essenese Obhan appeared for the Appellant, whereas CGSC Harish Vaidyanathan Shankar appeared for the Respondent.

Going by the background of the case, the Appellants had filed the national phase application at the Indian Patent Office titled ‘MANUFACTURING OF DECORATIVE LAMINATES BY INKJET’. The Respondents issued a hearing notice fixing the date of hearing, retaining the objections as mentioned in the First Examination Report. An order was passed by the Patent Office rejecting the subject application on the grounds that the amended claims failed to meet the requirements under Sections 10(4)(c) and 10(5) of the Act as they were vague and the scope of claims was indefinite. Another ground was that the amended claims were not patentable in terms of Section 2(1)(ja).

The Controller had held that some expressions/terms, which had been used in the subject patent application was vague and did not have a definitive boundary.

After considering the submission, the Bench observed that the terms of the patent claims that had been held to be vague, had been sufficiently described in the description of the complete specification.

Thus, the Bench highlighted that the Controller failed to consider that the patents specification as addressed to a person skilled in the art to whom the aforesaid terms of Claims would be quite clear in any case, and therefore, there is no merit in the objection on lack of clarity or that the Claims were indefinite.

Coming to the objection on lack of succinctness, the Bench clarified that even the Manual of Patent Office Practice and Procedure dated Nov 26, 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.

“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”, added the Bench.

On the issue of ‘common general knowledge’, the Bench observed that the Controller failed to give any source of the common knowledge that had been considered, and therefore, it cannot 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.

Noting that the corresponding patent application had been granted in various jurisdiction such as USA, UK, Australia, China and various countries in Europe, the Bench directed the Patent Office to grant the patent, subject to completion of necessary formalities.

Cause Title: AGFA NV and Anr. v. THE ASSISTANT CONTROLLER OF PATENTS AND DESIGNS and Anr. [Neutral Citation: 2023: DHC: 4030]

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Delhi High CourtJustice Amit BansalPatents Act 1970

Pankaj Bajpai