This case pertains to a legal appeal filed by BMI Group Denmark (formerly Icopal Danmark APS) against the refusal of their patent application by the Indian Patent Office. The patent application was for a multilayer sealing web designed for structures such as roofs, cladding, tanks, and cellars. The application was refused primarily on the grounds of lacking inventive step, as per the objections raised by the Controller of Patents during the examination process.
The Indian Patent Office and its Controller had cited multiple prior art references, specifically D1 to D4, which allegedly represented existing technologies that the invention could be obvious in light of. The patent office interpreted the claims as comprising a carrier insert made solely of a glass nonwoven and a separate glass reinforcement of knitted fabric, and concluded that the invention did not involve an inventive step over the cited prior art. Consequently, the Controller rejected the application under Section 2(1)(ja) of the Patents Act, 1970, stating that the claims lacked novelty and inventive step.
The applicant challenged this rejection by filing an appeal before the High Court of Delhi. The appellant's legal team argued that the patent examiner and the Controller had misinterpreted the invention, particularly concerning the combination of the carrier insert features. They asserted that the invention was innovative, as it combined a glass nonwoven with a knitted fabric reinforcement in a manner that was not obvious from the cited prior art. Further, the appellant contended that the patent office had improperly segmented the features of the invention, failing to appreciate the claimed combination as a whole, which imparted unique properties like cost-effectiveness, low shrinkage, and high dimensional stability.
The appellant also challenged the patent office's reliance on prior art D2, which related to decorative textile fabrics, arguing that it was non-analogous and irrelevant for establishing obviousness against the sealing web invention. They emphasized adherence to legal principles that mosaic of prior art can only be used when references are analogous, and this was not proven in the present case.
The court examined the detailed technical features of the invention, particularly focusing on the specific claim that the carrier insert must contain both a glass non woven and a knitted fabric reinforcement – a combination that the patent office reportedly did not recognize properly. The court found that the Controller had failed to consider the invention as a whole and had not adequately demonstrated how the prior art rendered the invention obvious. The court therefore allowed the appeal, setting aside the order of the patent office, and directed the authorities to proceed with the grant of patent.
Case Title: BMI Group Denmark APS Vs The Assistant Controller of Patents and Designs Date of Order: April 23, 2025 Case No.: C.A.(COMM.IPD-PAT) 7/2024 Neutral Citation: 2025:DHC:3174 Court Name: High Court of Delhi at New Delhi Name of Judge: Hon'ble Mr. Justice Amit Bansal
