Delhi High Court: In an appeal filed under Section 117A of the Patents Act, 1970 (‘Patents Act’) against the order, passed by the Controller of Patents and Designs (‘Controller’), by way of which, the Controller rejected the appellant’s Indian Patent Application (‘subject application’), under Section 15 of the Patents Act, a single judge bench of Mini Pushkarna J. remanded the matter to the Controller for de novo consideration, to be completed and order being passed within four months, uninfluenced by the impugned order.
The Court observed that simplicity is not a bar to patentability, and minor structural changes can still lead to substantive technical improvements. It further observed that once a new prior art has been introduced, even though it may belong to the applicant itself and was not part of the FER, then, also an applicant has the right to respond to the said newly introduced prior art. Therefore, refusal to allow the amendment to the specifications, which was sought to provide clarification regarding the technical advancements of the subject invention over the newly cited prior art, amounts to a clear violation of the Principles of Natural Justice.
The Court further noted if a prior art comes to the notice of the Controller during the pendency of a patent application, though not disclosed by the applicant, and if objection in that regard is raised by the Controller, the applicant would have a right to address such issues by way of amending the specifications, within the norms of amendment that are allowed as per law.
Background:
The appellant filed a patent application on 29-8-2013 for an invention titled “Vertical Rotary Parking System,” (‘subject invention’), used as a parking system so as to park as many vehicles as possible in a narrow space. A request for examination was made and the First Examination Report (‘FER’) was issued on 14-8-2018, to which the appellant responded on 11-1-2019. Subsequently, Parkerbot India Pvt. Ltd. filed a pre-grant opposition, citing prior art documents D-1 to D-4. The Patent Office issued a pre-grant notice on 8-2-2023, and the appellant responded with evidence. A hearing was scheduled but shortly before it, the opponent introduced a new prior art document, D-5, which was not part of the original opposition. The appellant attended the hearing and submitted arguments and a request for amendment (Form-13) in November 2023, while the opponent did not attend. On 12-4-2024, the Patent Office rejected the application, disregarding the pre grant opposition based on D-1 to D-4 but citing lack of inventive step under Section 2(1)(ja) of the Patents Act in view of D-5. It also rejected the appellant’s request to amend the specification under Section 15 of the Patents Act leading to filing of the present appeal.
Analysis and Decision
The Court noted that the appellant was also the inventor and patentee of prior art document D-5, which was a similar Vertical Rotary Parking System. The Court observed that the Controller’s conclusion of “lack of inventive step” was based on a simplistic view that the invention merely reversed the coupling configuration, without analysing the technical advancement or citing any authoritative evidence to support the conclusion of obviousness.
The Court held that the finding of the invention being a mere workshop modification lacked factual or legal foundation. It emphasized that simplicity is not a bar to patentability, and minor structural changes can still lead to substantive technical improvements. The Controller failed to substantiate the claim that such modifications did not involve technical expertise and as to how it was an obvious solution, and the reliance on “common general knowledge” was unsubstantiated and speculative, as no supporting material was cited. Moreover, the Court highlighted that the time gap between D-5 (published in 2003) and the subject application (filed in 2013) suggested the changes were not so obvious, especially as no third party made similar modifications in that period.
The Court further noted that the appellant had sought to amend the claim specifications to incorporate prior art D-5, into the specifications of the subject application. However, the said amendment was wrongly rejected by the Controller on the ground that, since the said document D-5 belonged to the appellant itself, the appellant ought to have mentioned about the said document as part of complete specification. Though the cited prior art D-5 belonged to the appellant itself, however, merely because the appellant did not cite D-5 at the time of filing the subject application, cannot be held against the appellant as a failure to disclose a complete specification.
The Court observed that there exists no specific bar for amendment to the specifications even at a subsequent stage, and the only requirement is that the amendment must satisfy the conditions provided under Section 59 of the Patents Act, and the amendment in the specifications is not inconsistent with the claims made in the original specifications. Thus, the respondent erred in rejecting the amendment application of the appellant and in not allowing the amendment in the specifications, which sought to explain the technical advancement in the subject invention over the prior art, i.e., document D-5. In view of the aforesaid, the Controller’s refusal to allow the amendment application was unjustified.
Furthermore, the Court acknowledged the appellant’s submission of a Technical Evidence Affidavit dated 5th July 2024, which provided stress analysis data and comparative technical details to substantiate claims of advancement over D-5. The Court found no impediment to the consideration of this affidavit, as it directly addressed the Controller’s concerns.
The Court further noted that the proposed amendment by the appellant, in its specifications, was a legitimate response to the Controller’s subsequent introduction of document D-5, as prior art. Thus, the Controller’s refusal to allow the appellant’s application for amendment of the specifications, is not justified. Once a new prior art has been introduced, even though it may belong to the applicant itself and was not part of the FER, then, also an applicant has the right to respond to the said newly introduced prior art. Therefore, refusal to allow the amendment to the specifications, which was sought to provide clarification regarding the technical advancements of the subject invention over the newly cited prior art, amounts to a clear violation of the Principles of Natural Justice.
The Court concluded that the impugned order was untenable and directed that it be set aside and the matter be remanded for de novo consideration by a different officer, uninfluenced by the impugned order. The patent application be restored, a fresh hearing be granted, and the process to be completed within four months.
[Dong Yang PC, Inc v. Controller, Patents and Designs, 2025 SCC OnLine Del 5112, decided on 1-7-2025]
Advocates who appeared in this case:
For the Appellant: Pravin Anand, Ravi Aggarwal, Advocates.
For the Respondent: Ankur Mittal, CGSC with Aviraj Pandey, Advocates.
