The Intellectual Property Appellate Board (‘IPAB’) recently examined the determination of inventive step in a patent application as per the provisions of the Patents Act, 1970[1].
Brief facts
Appellants had filed a national phase patent application in India for its invention titled, ‘APPARATUS FOR A CHECKPOINT’ vide Application No. 1332/MUMNP/2011, based on International Application No. PCT/DE2009/000014.
The Assistant Controller of Patents and Designs (‘Respondent’) refused the Appellants’ claimed invention, stating that the requirements of inventive step had not been met by the Appellants. According to the said order, the difference between the instant patent application over the cited prior art documents was obvious to a person skilled in the art and was thus not patentable as per Section 2(1)(ja) of the Patents Act, 1970 (‘Act’), and the amended claims did not meet the requirements of Section 2(1)(j) of the Act. The Appellants thereafter appealed to the IPAB.
Decision and analysis
The claimed invention in the instant patent application depicted a two-line apparatus for a checkpoint, wherein ‘two-line’ referred to two identical passage locks arranged besides and parallel to each other. It included at least two essential features, namely, a biometric unit arranged frontally opposite the entrance to the lock area (FEATURE A), and an exit door of the lock area which consisted of at least one pivoting wing in a known manner, wherein the biometric unit was integrated in at least one pivoting wing (FEATURE B).
The Respondent, in the impugned order, observed that the only difference between the claimed invention and the cited prior art documents was the placement of the biometric unit and its arrangement frontally opposite the entrance to the lock area, which it opined would have been obvious to a person skilled in the art at the time of the filing the patent application, and thus would not be patentable as per Section 2(1)(ja) of the Act.
The Appellants submitted that the Respondent’s refusal to grant a patent on the grounds of lack of inventive step and obviousness in light of cited prior art documents was erroneous, as the Respondent failed to consider all the features of claim 1 during the assessment of the inventive step. The Respondent had omitted at least one novel and inventive feature of the claim from the impugned order, i.e., it only considered FEATURE A during the assessment of inventive step under Section 2(1)(ja) of the Act.
The IPAB observed that in the FER, claims 1-3 were objected to on the grounds of lack of novelty based on the cited prior art documents viz., D1-D3, while all the claims 1-19 were objected to on the grounds of lack of inventive step based on the same documents viz., D1-D3. Further, the inventive step objection stated that the dependent claims 4-19 did not contain any feature that would enable the claimed invention to meet the requirements of inventive step.
In the hearing notice, the Respondent added two additional prior art documents viz., D4 and D5, and objected to all the claims for lack of inventive step. The IPAB found that the impugned order, however, relied only on cited prior art documents D1, D4, and D5 for the lack of inventive step, but was silent on the lack of novelty. Thus, the IPAB surmised that the Respondent had indicated its acceptance of novelty of the present invention, and confined its consideration to the said ground of refusal alone.
The IPAB scrutinised the international search report (ISR) of the instant application in the international phase and found that the prior art documents cited in the impugned order i.e., D1, D4, and D5, were also part of the ISR. Taking into account the corresponding foreign applications that were granted in the United States, Australia, Canada, and Russia, the IPAB stated that while the grant of patents in foreign jurisdictions had no binding effect on the Indian Patent Office, determination of inventive step based on identical citations would not vary considerably between jurisdictions.
In this instant case, the IPAB found that the Respondent had failed to make an objective assessment of the presence of an inventive step and the impugned order did not provide any reasoning other than a mere passing remark. The IPAB noted that the Respondent had also failed to apply the test of determination of inventive step as per the Manual of Patent Office Practice and Procedure or take into account the judicial pronouncement on the subject.
In this context, the IPAB, referring to the judicial pronouncement of the Supreme Court in the case of Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries,[2] reiterated the settled principle of law, “obviousness has to be strictly and objectively judged,” which the Respondent had not abided by in the impugned order.
Further, the IPAB found that the impugned order, wherein the patent application had been refused on the sole ground of lack of inventive step, failed to account for both the differentiating features that had been characterized in the amended claim 1. The Respondent had commented on one feature, albeit not objectively, and ignored the other feature. The IPAB held that an invention must be considered as a whole to determine inventive step, and a conclusion cannot be drawn merely on the basis that the individual parts of the claim taken separately were known or obvious.
Conclusion
The IPAB found that the Respondent’s analysis and determination of inventive step in the instant case was based on incomplete facts, without reason, and was thus unsustainable in law. Accordingly, the IPAB set aside the impugned order, allowed the Appellants’ appeal, and directed the Respondent to grant a patent on the claimed invention.
[1] Tony Mon George Constituted Attorney of Magnetic Autocontrol GMBH & Anr . v. The Assistant Controller of Patents & Designs [OA/13/2020/PT/MUM, decided on 9 November 2020].
[2] Biswanath Prasad Radhey Shyam, A.I.R. 1982 S.C. 1444.