The contribution of the Intellectual Property Divisions of the High Courts in the fast-paced evolution of the IP framework of the country has been monumental. The Courts have provided timely and effective relief to the applicants/patentees, thus emboldening them to file more patent applications at the Indian Patent Office (IPO). The Courts have delivered several judgments in the last few years, ranging from commenting on the reasoning of the orders issued by the IPO to providing clarity on the interpretation of various statutes of the patent law, strengthening the overall IP framework.
One such judgment recently came from the Madras High Court in Pinnacle Engines Inc. and others vs Assistant Controller of Patents & Designs. This judgment yet again emphasised the criticality of a reasoned and speaking order by the IPO. In fact, the Court delved into the technical subject matter of the invention and the prior art documents, outlining the main technical issue and then remanding the matter back to the IPO for reconsideration on that limited aspect only.
This matter was an appeal filed under Section 117A of the Patents Act, 1970, to set aside an order of the Assistant Controller of Patents & Designs. The impugned order was issued on September 24th, 2020, in a patent application bearing number 8612/CHENP/2012 and titled “Opposed piston engine with non-collinear axes of translation”, refusing the grant to the application on the ground of lack of inventive step.
The invention relates to internal combustion engines, and more specifically to opposed piston engines having a combustion volume chamber that is at least partially defined by piston head crowns of two opposed pistons, which reciprocate along axes of translation within two-cylinder bores that are inclined relative to one another. Therefore, unlike a conventional opposed piston engine in which the axes along which the two opposed pistons are translated during their reciprocating motion are collinear, the two axes are inclined relative to each other at an angle that is greater than 0° and smaller than 180°, and such angle can be measured in a plane defined by the axis of translation of the two opposed pistons.
During the prosecution, the independent claims were amended to incorporate the feature of a first crank offset between the first piston and the first crankshaft and a second crank offset between the second piston and the second crankshaft. This feature aids in lowering the load on joints between the pistons and the rubbing of the pistons with the cylinder wall during engine operation. Another feature that was incorporated in the claims during the prosecution was that the crankshafts rotate in opposite directions, in effect reducing vibrations.
The Appellants argued that the prior art documents disclose inverted pistons with a collinear shaft. Such construction resulted in a bulky engine, which caused packaging problems and fuel leakage. In contrast, the relatively inclined axes of translation proposed by the present invention save space. Moreover, the crank offset proposed by the present invention reduces friction.
The appellants argued that none of the cited prior art documents, D1, D3, or D5, discloses that a first crank offset is provided between the first piston and the first crankshaft and that a second crank offset is provided between the second piston and the second crankshaft. Moreover, none of the prior art documents discloses that the rotation of the first crankshaft and second crankshaft are in opposite directions.
On the other hand, the respondent argued that the prior art documents disclose all the features of the claims of the present invention. Moreover, the respondent brought to the Court’s attention that the appellants also applied for the grant of patent before the US patent office and the China patent office but subsequently abandoned the applications in response to the objections raised by the respective patent offices.
After hearing both the parties, the Court noted that the appellant’s primary emphasis was on establishing the inventive step based on two features of the invention.
- the provision of a crank offset between the first piston and the first crankshaft, the provision of a crank offset between the second piston and the second crankshaft, and
- the rotation of the two crankshafts in opposite directions.
However, neither of these features was present in the original claims. In fact, the appellants did not introduce these features in the claims, even when responding to the First Examination Report (FER). It was only in the Hearing submission filed after the oral Hearing that the appellants incorporated these features of crank offset and crankshaft rotation in the claims. The Court also found that these features are supported in the detailed description of the patent application.
The Court then turned to the impugned order and found that the Controller had merely set out the various elements of the invention in arriving at the conclusion. The Controller has simply concluded that the claimed invention would be obvious to a normal technical engineer based on the cited prior arts without any analysis or discussion of its features. The order does not even include any analysis of the features of the crank offset and crankshaft rotation. The Court, therefore, found the order effectively unreasoned and unsustainable.
The Court thereafter addressed the question of whether the matter should be remanded after setting aside the impugned order or whether the patent application should be directed to proceed to grant. To decide on that, the Court delved deeper into the cited documents. For D1, the Court held that the features of crank offset and crankshaft rotation are neither claimed nor shown in the drawings of D1. Regarding D3, the Court held that when looking at paragraphs [0030] and [0031] of the complete specification of the claimed invention, there is a similarity in the design of the cylinders, pistons and the common central combustion chamber defined by these elements in D3. However, Figures 1 and 3 of D3 show that the crankshaft is aligned with the cylinders and not offset. Similarly, in D5, it appears from Figures 8 and 9 that the crankshaft is aligned with the cylinders and not offset. The Court thus held that the features of the crank offset and crankshaft rotation are not disclosed in D1, D3, and D5. There is not even any teaching, suggestion, or motivation in any of these prior art documents, which would make these features obvious to a person skilled in the art.
However, the Court also acknowledged that the independent claims 1 and 11 were modified to incorporate these features only in the Hearing submission that was filed after attending the oral Hearing. Therefore, there is a possibility that the Controller did not consider the prior art documents in the context of the features of crank offsets and crankshaft rotation.
The Court also commented on the allowability of incorporation of these features into the claims at the Hearing submission stage. The Court particularly held that this amendment was within the scope of the complete specification and is liable to be allowed as per Section 59 of the Patents Act, owing to the disclosure of these features, at least in paragraph [0059] of the specification.
The Court further held that based on their survey of the prior art in this technical field, there is a possibility that other relevant prior art may exist, disclosing these two features. Therefore, while they are not inclined to direct that the application proceeds to grant, the application is remanded for reconsideration on the limited aspect outlined above, i.e., focussing only on the abovementioned two features. Moreover, to preclude the possibility of pre-determination, the Court directed that any officer other than the officer who issued the impugned order shall undertake this reconsideration.
This judgment reiterates the indispensable duty of the IPO to issue a reasoned and speaking order. It further clarifies that any claim amendment, even if made at the stage of the hearing submission, shall be considered by the IPO when arriving at its decision on the grant of the patent. The evident effort taken by the Court in understanding the technical nitty-gritty of the matter and outlining the specific task for the IPO to perform in their reconsideration is encouraging for the applicants/patentees. We can expect more such judgments from Courts in the times to come, paving the way for a more evolved IP ecosystem.
