The Delhi High Court, in Nhk Spring Co Ltd vs Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 296/2022] appeal case, examined the importance of the Patent Office manual and reported cases in the determination of the Inventive step. The Court observed that “The Patent Manual advises against fragmentary analysis of claims or inventive parts, advocating for a holistic view to truly gauge the inventive step”. This appeal was filed against the rejection of an Indian Patent application(4098/DELNP/2015) titled “SUSPENSION AND COMPRESSION COIL SPRING FOR SUSPENSION”.
Factual Matrix and Submission of the Counsel
The Appellant/Applicant, NHK SPRING CO LTD, filed an appeal under Section 117A of the Act against the order of the Controller dated March 31, 2022, for the refusal of the patent on grounds of ‘lack of inventive step’. The Appellant’s Counsel contended that the impugned order did not disclose adequate reasoning as to how the ground of obviousness was made out in respect of the prior arts cited in the order. Further, the Counsel submitted that the same prior arts were also cited before the Trial and Appeal Board in a similar application for the subject patent in Japan (Appeal 2018-9502 from an order of the Japanese Patent Office; Japanese Patent Application No. 2017- 11550), and the board had thoroughly examined the same prior arts before eventually granting the patent at the appellate stage.
Analysis and Decision
In this case, the Court found the relevance of the guidelines in The Manual for Patent Office Practice and Procedure dated November 26, 2019 (“Patent Manual”) to determine an inventive step. Additionally, the Court cited Windsurfing International v. Tabur Marine [1985] RPC 59, which lays down the steps to be followed for the determination of the inventive step:
“(i) identifying the inventive concept embodied in the patent;
(ii) imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date
(iii) identifying the difference, if any, between the matter cited and the alleged invention; and
(iv) deciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.”
Further, the Court relying on the judicial precedent set by the Court in the case Bristol-Myers Squibb Holdings v. BDR Pharmaceuticals International 2020 [SCC OnLine Del 1700] observed that while a mosaic of prior art documents may be done in order to claim obviousness, however, while doing so, it must also be demonstrated that the prior art exists, but how the person of ordinary skill in the art would have been led to combine the relevant components from the mosaic of prior art.
The Court then held that “The mere citation and juxtaposition of prior arts do not suffice to establish obviousness”. The Court observed that in the refusal order, the Controller has not disclosed how he arrived at the decision relating to a lack of inventive step in view of the cited prior art, concluding that “The Assistant Controller of Patents has only noted the disclosures made in the prior art D1 and the contents of the alleged invention. No discussion or inference follows on this point before the Controller advances to discuss the other prior art, D2, D4 and D5. It is thus apparent that the Assistant Controller’s analysis falls short of the nuanced examination mandated by both the Patent Manual and judicial precedents. The decision inadequately addressed the crux of the inventive step by primarily focusing on the prior arts D1-D5 without delving into the synthesis of these teachings or their collective impact on a person skilled in the art. The mere citation and juxtaposition of prior arts do not suffice to establish obviousness”.
Further, the Court opined that “While the Assistant Controller of Patents and Designs has noted the inventions cited in the prior arts and the claims made in the alleged invention, however, in the opinion of the Court, no attempt has been made to disclose how the teachings given therein would be obvious to a ‘person skilled in the art’ to conclude that the alleged invention lacks an inventive step”.
In view of the lack of proper reasoning in the refusal order, the Court found this case fit to be remanded and for reconsideration.
Therefore, on the aforementioned analysis and reasoning, the Court remanded the matter and directed that the Assistant Controller shall not be prejudiced by any observations made in the impugned order, and the proceedings shall be conducted afresh by taking into account the judicial precedents with regard to the substance of the matter.
Conclusion
In this case, the Court reiterated that the Controller should give proper reasoning for the refusal on the grounds of obviousness. Merely focusing on the prior arts without delving into the synthesis of these teachings or their collective impact on a person skilled in the art, the decision of refusal is insufficient to adequately address the crux of the inventive step. The mere citation and juxtaposition of prior arts do not suffice to establish obviousness. While remanding back the case, the Court urged the Controller to thoroughly examine the cited prior art and give adequate reasons as to how the ground of obviousness is made out in respect of the prior arts to establish the ground of refusing the patent application due to lack of inventive step/non-obviousness. This case highlights the need for proper reasoning before any patent application is refused.
