Judgement date:04.11.2022
IPD Commercial Patent Appeal No. :C.A. (COMM.IPD-PAT) 29 of 2021
Name of Court: High Court of Delhi
Name of Hon'ble Justice: Prathiba M Singh H.J.
Case Title: Avery Dennison Corporation Vs Controller of Patent and Design
The subject matter IPD Commercial Patent Appeal No. :C.A. (COMM.IPD-PAT) 29 of 2021 was filed by the Appellant against Order dated 12.08.2021 passed by the Controller of Patent where by the application for grant of a patent titled 'Notched Fastener' bearing Application No. 5160/DELNP/2013, filed on 10th June, 2013 under Section 15 of the Patents Act, 1970 was refused on the ground that the claimed subject matter of the subject patent does not constitute an invention under Section 2(1)(j) of the Act. The reason for rejection was that the subject matter application lacks inventive steps in view of prior arts D 2 and D3.
The Hon'ble High Court of Delhi highlighted the 4 approaches to evaluate inventive steps. These are as under:
i.Obvious to try approach:
This approach involves an analysis of whether in view of the teachings/solutions proposed in the prior art, it was obvious to try and arrive at the subject invention.
ii. Problem/solution approach:
This approach considers whether in the light of the closest prior art and the objective technical problem, the solution claimed in the invention would be obvious to the skilled person. If the skilled person can decipher the solution being claimed, then the subject matter is held to be obvious.
iii. Could-Would Approach
In this approach the question that is raised is whether there is any teaching in the prior art as a whole that would and not simply could have prompted a skilled person, with the knowledge of the objective technical problem, to either modify or adapt the closest prior art to arrive at the subject matter of the claims.
iv. Teaching Suggestion Motivation (TSM test)
This test originated in the USA as per which, if by the Teaching, Suggestion or Motivation from the prior art, an ordinary skilled person can modify the prior art reference or combine prior art references to arrive at the claimed invention, then the subject matter being claimed is obvious.
After discussing the afore mentioned approaches, the Hon'ble High Court of Delhi was pleased to observed that the subject matter Patent Application does not lack inventive step as the subject patent, thus, tries to address inconsistencies while cutting or severing of the fastener from the fastener stock, reduction in the size of the side members, variation in the cuts and the locations thereof. Accordingly the order passed by the controller of Patent was set aside.
Ajay Amitabh Suman, [IP ADJUTOR]
IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539
D/1027/2002
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