The Delhi High Court while granting a patent for a product expounded that to determine whether the invention is obvious or not, the surer test would be to look at the time gap between the prior art and the subject patent. It also noted that just because an invention is simple, it does not mean a patent cannot be granted.
Brief Facts:
The Appellant’s business includes providing branding and information labeling solutions and manufacturing labeling materials to enhance brand packaging. The patent application arose out of a Patent Cooperation Treaty (hereinafter referred to as "PCT") application which later entered the national phase in India. The appellant had filed a request for examination of the said application. Pursuant to this, a first examination report along with a statement of object and reason was issued. The primary objection raised was that it lacked inventive steps.
The controller decided that the patent application should not be allowed as there was no inventive step as per Section 2(1)(j) of the Patents Act, 1970 (hereinafter referred to as the “Act”). It is against this decision, that an appeal has been preferred by the appellant.
Contentions of the Appellant:
It was contended by the Appellant that the inventive step and the technical advancement would be in the creation, position, shape, and direction of the Notch. It was argued that the comparison between prior art documents and the subject patent would itself show that the subject patent is not obvious when the knowledge of prior art documents is considered. Therefore, the prior art documents can and are distinguishable from the subject patent.
Contentions of the Respondent:
It was contended by the Respondent that a mere change in the shape or position of the notch would be obvious to a person skilled in the art and that by itself shape cannot be said to be an inventive step. It was argued that the Appellant was only aiming at evergreening the patent as the prior art also belonged to the Appellant.
Observations of the Court:
The Delhi High Court examined the principles necessary for determining the existence of inventive steps and lack of obviousness. The variety of tests laid down to ascertain the same was discussed. The following are the tests:
1. Obvious to try an approach
This test involves analyzing whether teachings/solutions in the prior art were too obvious to try and arrive at.
2. Problem/solution approach
In this test, it is determined whether the invention would be too obvious for the person skilled in the art and if yes then the subject matter would be too obvious.
3. Could-would approach
This approach is based on observing whether the teaching in the prior art as a whole would and not simply could have persuaded the person skilled in the art to either modify or adapt the closest prior art to arrive at the subject matter.
4. Technical Suggestion Motivation (TCM) Test
In this test, if by the teaching, suggestion, or motivation from the prior art, the person skilled in the art could modify or combine the prior art reference to arrive at the claimed invention then the subject matter would be too obvious.
The Court analyzed the several tests and opined that none of the tests are to be applied in a straight jacket manner as each application varies as per the field of technology. Ultimately, the prior art needs to be compared with the claims from the perspective of the person skilled in the art.
As regards the present case, the subject patent was compared with the prior arts. It was discovered that one of the prior arts was filed by the same Appellant. The said prior art and the subject patent were compared in detail and it was noted that while in the prior art there was a possibility of tearing which could result in irregular cutting, the subject patent had proper alignment. The subject patent is different than the prior art as it tries to address the inconsistencies.
The High Court then moved on to analyze whether this invention was obvious or not. Two principals were laid down to analyze whether the invention can be categorized as obvious or not:
- Simplicity does not defeat invention
- Hindsight or ex-post facto analysis is not permissible.
The Court explicitly stated that even a simple invention can be granted a patent. Moving on, it was opined that the surer test in determining the inventive step is to check the time gap between the prior art and the subject patent. If a long time has passed and one simple change was done, the Court would not generally lean towards declaring invention as obvious.
As for the present case, the High Court remarked that the prior art document belonged to the appellant himself and the subject patent application was filed after a time gap of almost 18 years. It was observed that in between no other prior art came into existence and had the invention been so obvious, anybody could have made the changes and arrived at it. The improvements in the subject patent are decipherable and hence, do not lack inventive steps.
The decision of the Court:
The Delhi High Court expounded that even though changes made to the subject patent may seem simple or superficial but the same have an impact on the product concerned and therefore, the patent shall be granted.
Cause Title: Avery Dennison Corporation v. Controller of Patents and Designs
Bench: Justice Prathiba M. Singh
Decided on: November 04th, 2022
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