Introduction
The case of Alfred Von Schukmann vs The Controller General of Patents, decided by the Delhi High Court on January 12, 2023, represents a pivotal moment in Indian patent law, emphasizing the necessity of reasoned decision-making in patent application rejections. This appeal, filed under Section 117-A of the Patents Act, 1970, challenged the Assistant Controller of Patents’ cryptic order rejecting the appellant’s patent application for a “Step-Action Indexing Mechanism” due to an alleged lack of inventive step. The case underscores the judiciary’s role in ensuring that patent offices adhere to principles of natural justice, particularly by providing detailed justifications when denying patent protection. By setting aside the impugned order and remanding the matter for fresh consideration, the Delhi High Court reinforced the requirement for patent authorities to engage meaningfully with applicants’ submissions and prior art distinctions, setting a precedent for transparency and fairness in patent adjudication.
Detailed Factual Background
The appellant, Alfred Von Schukmann, filed Indian Patent Application No. 3845/DELNP/2007 on May 10, 2007, at the Patent Office in New Delhi for an invention titled “Step-Action Indexing Mechanism.” This application was a national phase entry under the Patent Cooperation Treaty (PCT), claiming a priority date of November 10, 2004. The invention related to a novel indexing mechanism, characterized by features such as a sun gear, planet gear, and indexing fingers extending from a central hub, designed to facilitate stepwise rotary advancement in mechanical systems, such as inhalers or counters.
On November 22, 2013, the Patent Office issued a First Examination Report (FER), raising objections, including a critical one under Section 2(1)(j) of the Patents Act, 1970, alleging that the invention lacked novelty and inventive step. The appellant responded comprehensively, distinguishing the invention from the cited prior art. Subsequent hearing notices reiterated the objection of lack of inventive step, referencing prior art documents labeled D1 (US 2003/0178020 A1), D2 (US 2004/0211420 A1), and D3 (EP 480488 A1). On May 15, 2017, the appellant submitted detailed written submissions, explaining how the invention’s unique features—such as the absence of a planet gear mechanism in D1, the lack of indexing fingers in D2, and the distinct functionality of fingers in D3—differentiated it from the prior art. The appellant also highlighted that the invention had been granted patents in China, Mexico, Canada, the United States, and the European Patent Office (EPO), underscoring its global recognition.
Despite these submissions, the Assistant Controller of Patents issued an order on August 3, 2017, rejecting the application under Section 15 of the Patents Act, 1970, on the grounds that the amended claims 1-11 lacked inventive step under Section 2(1)(j) read with Section 2(1)(ja). The order was brief, stating only that the claims were obvious to a person skilled in the art when taught by D1, D2, and D3 in combination, without addressing the appellant’s arguments or providing a detailed analysis of the prior art.
Detailed Procedural Background
The procedural journey of this case began with the filing of the patent application on May 10, 2007. Following the FER issued on November 22, 2013, the appellant engaged in a series of interactions with the Patent Office, responding to objections and attending hearings. The appellant’s written submissions on May 15, 2017, were a critical attempt to address the inventive step objection by distinguishing the invention from the cited prior art. However, the Assistant Controller’s order on August 3, 2017, rejected the application in a cursory manner, prompting the appellant to file an appeal under Section 117-A of the Patents Act, 1970, before the Delhi High Court.
The appeal, registered as C.A. (COMM. IPD-PAT) 435/2022, was heard by Justice Amit Bansal. The appellant was represented by Mr. Rohit Rangi, along with Mr. Debashish Banerjee, Mr. Vineet Rohilla, and Mr. Ankush Verma, while the respondents, including the Controller General of Patents, were represented by Mr. Asheesh Jain, Central Government Standing Counsel, with Mr. Gaurav Kumar and Mr. Vishal Kumar. The court heard oral arguments and examined the record, delivering its judgment on January 12, 2023, in an oral pronouncement, with the signed order dated January 16, 2023.
Issues Involved in the Case
The court grappled with the following key issues in adjudicating the appeal:
Whether the Assistant Controller’s order rejecting the patent application for lack of inventive step was adequately reasoned and compliant with principles of natural justice. Whether the Patent Office failed to engage with the appellant’s submissions distinguishing the invention from the cited prior art (D1, D2, and D3). Whether the cryptic nature of the impugned order warranted its setting aside and remand for fresh consideration. Whether the matter should be assigned to a different officer upon remand to avoid potential bias or predetermination. Whether the appellant’s arguments in the appeal introduced new grounds not raised in earlier submissions, and if so, their impact on the appeal’s merits.
Detailed Submission of Parties
Appellant’s Submissions
The appellant, represented by Mr. Rohit Rangi, argued that the Assistant Controller’s order was fatally deficient for its lack of reasoning. Despite detailed submissions in response to the FER and hearing notices, particularly the May 15, 2017, written submissions, the Patent Office failed to address how the invention lacked inventive step in light of D1, D2, and D3. The appellant emphasized that the invention’s unique features—such as the sun gear with a toothed underside, planet gear mechanism, and indexing fingers directed obliquely upward in a secant form—were absent or functionally distinct in the prior art. For instance, D1 (US 2003/0178020 A1) lacked a planet gear mechanism and relied on a toothed wheel, D2 (US 2004/0211420 A1) had no indexing fingers or sun gear, and D3 (EP 480488 A1) featured fingers that flexed vertically, not obliquely, and lacked the claimed ring part slots. The appellant argued that combining these references would not yield the claimed invention, and the Controller’s failure to analyze this was a procedural flaw.
The appellant relied on Agriboard International LLC v. Deputy Controller of Patents and Designs (2022 SCC OnLine Del 940) and Auckland Uniservices Limited v. Assistant Controller of Patents and Designs (C.A. (COMM-IPD-PAT) 8/2022, decided on September 27, 2022), which mandated that patent rejections for lack of inventive step must include a reasoned analysis of the prior art, the invention, and the obviousness to a person skilled in the art. The appellant also cited the grant of patents in multiple jurisdictions as evidence of the invention’s inventiveness. Upon remand, the appellant requested that the matter be assigned to a different officer, citing Art Screw Co. Ltd v. Assistant Controller of Patents and Designs (2022 SCC OnLine Del 4429), to avoid any apprehension of bias.
Respondents’ Submissions
The respondents, represented by Mr. Asheesh Jain, defended the impugned order, arguing that the appellant failed to adequately distinguish the invention from the prior art in its submissions to the Patent Office. They contended that the Controller’s conclusion of obviousness was justified based on the combined teachings of D1, D2, and D3. The respondents further asserted that the appellant raised new grounds in the appeal that were not part of the written submissions, suggesting that these could not be considered. They maintained that the Patent Office’s decision was within its discretion and did not warrant judicial interference.
Detailed Discussion on Judgments Cited by Parties
The appellant relied on several precedents to argue that the Patent Office’s cryptic order violated established legal standards:
Agriboard International LLC v. Deputy Controller of Patents and Designs, 2022 SCC OnLine Del 940 (Delhi High Court): This case was central to the appellant’s argument, as it outlined the requirements for rejecting a patent application for lack of inventive step. The court held that the Controller must analyze three elements: the invention disclosed in the prior art, the invention in the application, and how the subject invention would be obvious to a person skilled in the art. A bare conclusion of obviousness, without discussing these elements, is impermissible unless obviousness is absolutely clear. The court emphasized that Section 2(1)(ja) of the Patents Act, 1970, requires an analysis of existing knowledge and the technical advance or economic significance of the invention. The Delhi High Court in Schukmann applied this framework, finding the impugned order deficient for lacking such analysis.
Auckland Uniservices Limited v. Assistant Controller of Patents and Designs, C.A. (COMM-IPD-PAT) 8/2022, decided on September 27, 2022 (Delhi High Court): This judgment reinforced Agriboard, reiterating that a speaking order is mandatory when rejecting a patent application. The court held that the Patent Office must explain how the prior art renders the invention obvious, engaging with the applicant’s submissions. The Schukmann court cited this case to highlight the Patent Office’s failure to address the appellant’s detailed distinctions from D1, D2, and D3.
N.V. Satheesh Madhav and Anr v. Deputy Controller of Patents and Designs, 2022 SCC OnLine Del 4568 (Delhi High Court): This case, decided by Justice Amit Bansal himself, followed Agriboard and Auckland, affirming the need for reasoned orders in patent rejections. It supported the appellant’s contention that the cryptic nature of the impugned order violated procedural fairness.
Art Screw Co. Ltd v. Assistant Controller of Patents and Designs, 2022 SCC OnLine Del 4429 (Delhi High Court, decided on December 14, 2022): Cited by the appellant to request assignment to a different officer upon remand, this case established that remanding a matter to a different officer is appropriate to avoid apprehension of predetermination. The Schukmann court relied on this precedent to grant the appellant’s request.
Manohar v. State of Maharashtra & Ors., AIR 2013 SC 681 (Supreme Court of India): Referenced in Agriboard and cited indirectly through that case, this Supreme Court decision underscored that application of mind and reasoned decision-making are core elements of natural justice. The Schukmann court applied this principle to emphasize the Patent Office’s obligation to provide a reasoned rejection.
The respondents did not cite specific judgments, relying instead on the Controller’s discretion and the sufficiency of the prior art combination. The court’s analysis focused on the appellant’s cited precedents, which provided a robust legal framework for evaluating the impugned order’s deficiencies.
Detailed Reasoning and Analysis of Judge
Justice Amit Bansal’s judgment meticulously dissected the impugned order’s shortcomings, grounding its analysis in statutory provisions and judicial precedents. The court began by affirming the principles laid out in Agriboard International, which required the Controller to consider three elements when rejecting an invention for lack of inventive step: the prior art’s disclosure, the invention’s disclosure, and the obviousness to a person skilled in the art. Section 2(1)(ja) defines “inventive step” as a feature involving technical advance or economic significance that is not obvious, necessitating a detailed analysis of how the prior art renders the invention obvious.
The court found the impugned order wholly deficient, as it merely concluded that the amended claims 1-11 were obvious based on D1, D2, and D3, without engaging with the appellant’s submissions. The May 15, 2017, written submissions provided a granular comparison, highlighting the absence of key features like the planet gear mechanism, indexing fingers, and ring part slots in the prior art. For example, D1 relied on a toothed wheel, not a sun or planet gear; D2 lacked the claimed indexing fingers and sun gear; and D3’s fingers functioned differently, lacking the oblique secant form and rotary action. The appellant’s argument that combining these references would not yield the claimed invention was ignored, rendering the order arbitrary.
The court rejected the respondents’ contention that the appellant raised new grounds, noting that the appeal focused on the Controller’s failure to address existing submissions, not new technical arguments. The grant of patents in other jurisdictions, while not binding, supported the appellant’s claim of inventiveness, further underscoring the need for a reasoned evaluation. The court also dismissed the respondents’ defense of the Controller’s discretion, emphasizing that natural justice, as reiterated in Manohar and Agriboard, mandates a speaking order.
On the remedy, the court set aside the impugned order and remanded the matter for fresh consideration, directing the Patent Office to consider the existing record, particularly the appellant’s prior art submissions. Citing Art Screw, the court agreed to assign the matter to a different officer to ensure impartiality, avoiding any perception of predetermination. The court imposed a four-month timeline for the new order, balancing efficiency with thoroughness.
Final Decision
The Delhi High Court allowed the appeal (C.A. (COMM. IPD-PAT) 435/2022), setting aside the Assistant Controller’s order dated August 3, 2017, which rejected the appellant’s patent application. The matter was remanded to the Patent Office for fresh consideration by a different officer, with instructions to pass a reasoned order within four months, taking into account the appellant’s submissions and the existing record. The court directed the Registry to supply a copy of the order to the Controller General’s office for compliance.
Law Settled in This Case
This case established several critical principles in Indian patent law, particularly regarding the adjudication of patent applications:
Requirement of Reasoned Orders: The Patent Office must pass a speaking order when rejecting a patent application, analyzing the prior art, the invention, and the obviousness to a person skilled in the art, as mandated by Section 2(1)(ja) and principles of natural justice. Engagement with Applicant’s Submissions: Controllers must address applicants’ arguments, particularly distinctions from prior art, to ensure procedural fairness and avoid arbitrary rejections. Elements of Inventive Step Analysis: A rejection for lack of inventive step requires a discussion of the prior art’s disclosure, the invention’s features, and the reasoning for obviousness, unless the lack of inventiveness is patently clear. Remand to Different Officer: To avoid apprehension of bias, courts may direct that remanded patent applications be considered by a different officer, ensuring impartial adjudication. Judicial Oversight of Patent Office Decisions: Courts will intervene when patent rejections lack reasoning, reinforcing the judiciary’s role in upholding transparency and fairness in intellectual property administration.
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
