Rejection of Patent Application namely "Managing Instant Messaging Sessions on Multiple Devices"
Introduction:
The patent system plays a crucial role in incentivizing innovation by granting exclusive rights to inventors for their creations. However, not all inventions meet the criteria for patentability. This article delves into a recent case concerning the rejection of a patent application titled 'Managing Instant Messaging Sessions on Multiple Devices' under Section 117A of the Patents Act, 1970 in India.
Background of the Case:
The Appellant filed a patent application on July 13, 2007, before the Indian Patent Office (IPO), seeking protection for their invention related to managing instant messaging sessions on multiple devices. The application claimed priority from a US patent application filed on December 30, 2004. However, the IPO refused the application citing lack of novelty and inventive step, primarily based on the disclosure made in a prior art document referred to as D1.
Grounds for Refusal:
The IPO's decision to refuse the patent application was mainly based on the disclosure found in the prior art document D1, which apparently anticipated the claimed invention. The Appellant contended that a specific feature, i.e., mirroring of data from one device to another simultaneously, was not explicitly disclosed in D1 and thus, their invention was novel and non-obvious. However, the court rejected this argument, asserting that D1 indeed facilitated the transfer of data between devices of the same user, thus achieving a similar objective as the claimed invention.
Analysis of the Court's Decision:
The Hon'ble High Court of Delhi upheld the IPO's decision to reject the patent application, emphasizing that the claimed invention lacked inventive step. The court reasoned that despite the Appellant's assertion of a unique feature, the overall concept of transferring data between devices for instant messaging purposes was evident in the prior art, rendering the claimed invention obvious to a person skilled in the art.
Legal Interpretation:
Section 117A of the Patents Act, 1970 allows for appeals against decisions of the IPO relating to the grant or refusal of patents. However, such appeals must be based on specific grounds, including lack of novelty and inventive step. In this case, the court's determination of lack of inventive step underscores the importance of demonstrating an inventive leap beyond what is already known in the field.
Conclusion:
The rejection of the patent application in this case highlights the stringent criteria applied by patent offices in assessing the patentability of inventions. Despite the Appellant's arguments, the court concluded that the claimed invention did not fulfill the requirements of novelty and inventive step, thus affirming the IPO's decision.
Case Title: Google Inc Vs Controller of Patent
Judgment/Order Date: 02.04.2024
Case No: C.A.(COMM.IPD-PAT) 395/2022
Neutral Citation:2024:DHC: 22581
Name of Court: Delhi High Court
Name of Hon'ble Judge: Prathiba M Singh, H.J.
Disclaimer:
This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.
Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Email: ajayamitabhsuman@gmail.com,
Ph No: 9990389539
Introduction:
The patent system plays a crucial role in incentivizing innovation by granting exclusive rights to inventors for their creations. However, not all inventions meet the criteria for patentability. This article delves into a recent case concerning the rejection of a patent application titled 'Managing Instant Messaging Sessions on Multiple Devices' under Section 117A of the Patents Act, 1970 in India.
Background of the Case:
The Appellant filed a patent application on July 13, 2007, before the Indian Patent Office (IPO), seeking protection for their invention related to managing instant messaging sessions on multiple devices. The application claimed priority from a US patent application filed on December 30, 2004. However, the IPO refused the application citing lack of novelty and inventive step, primarily based on the disclosure made in a prior art document referred to as D1.
Grounds for Refusal:
The IPO's decision to refuse the patent application was mainly based on the disclosure found in the prior art document D1, which apparently anticipated the claimed invention. The Appellant contended that a specific feature, i.e., mirroring of data from one device to another simultaneously, was not explicitly disclosed in D1 and thus, their invention was novel and non-obvious. However, the court rejected this argument, asserting that D1 indeed facilitated the transfer of data between devices of the same user, thus achieving a similar objective as the claimed invention.
Analysis of the Court's Decision:
The Hon'ble High Court of Delhi upheld the IPO's decision to reject the patent application, emphasizing that the claimed invention lacked inventive step. The court reasoned that despite the Appellant's assertion of a unique feature, the overall concept of transferring data between devices for instant messaging purposes was evident in the prior art, rendering the claimed invention obvious to a person skilled in the art.
Legal Interpretation:
Section 117A of the Patents Act, 1970 allows for appeals against decisions of the IPO relating to the grant or refusal of patents. However, such appeals must be based on specific grounds, including lack of novelty and inventive step. In this case, the court's determination of lack of inventive step underscores the importance of demonstrating an inventive leap beyond what is already known in the field.
Conclusion:
The rejection of the patent application in this case highlights the stringent criteria applied by patent offices in assessing the patentability of inventions. Despite the Appellant's arguments, the court concluded that the claimed invention did not fulfill the requirements of novelty and inventive step, thus affirming the IPO's decision.
Case Title: Google Inc Vs Controller of Patent
Judgment/Order Date: 02.04.2024
Case No: C.A.(COMM.IPD-PAT) 395/2022
Neutral Citation:2024:DHC: 22581
Name of Court: Delhi High Court
Name of Hon'ble Judge: Prathiba M Singh, H.J.
Disclaimer:
This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.
Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Email: ajayamitabhsuman@gmail.com,
Ph No: 9990389539
