The appellant filed a patent application for a Vertical Rotary Parking System intended to enable efficient vehicle parking in limited space. The application was rejected by the Controller of Patents and Designs on the grounds that the invention lacked inventive step over a prior art document (D-5), and that the claimed changes were mere workshop modifications by interchanging male and female coupling elements in the system.
Procedurally, after a First Examination Report raised objections, the appellant responded and faced a pre-grant opposition by a third party. The Controller rejected the application under Section 15 of the Patents Act on April 12, 2024, citing lack of inventive step and also refused an amendment application the appellant had filed to incorporate D-5 into the specification.
The core dispute was whether the appellant’s reconfiguration of coupling elements amounted to a patentable technical advancement or whether it was an obvious modification of prior art.
In discussion, the Court observed that simplicity in invention does not defeat patentability if technical advancement is shown, and noted the Controller failed to substantiate how the changes were obvious to a person skilled in the art or supported by common general knowledge. The Court relied on precedents including Avery Dennison Corporation v. Controller of Patents and Designs, 2022 SCC OnLine Del 3659, and AGFA NV v. Assistant Controller of Patents, 2023 SCC OnLine Del 3493, to emphasize that even minor changes can involve inventive steps if they solve technical problems in non-obvious ways. It also held that refusal to allow the appellant to amend the specification to address D-5 violated principles of natural justice.
The Court set aside the impugned order, remanded the matter to the Controller for de novo consideration by a different officer, and directed that a fresh hearing be given to the appellant with a decision to be passed within four months.
