When Simplicity Becomes Innovation: Examination of Section 2(1)(ja) of the Patents Act 1970
Introduction: This case concerns the appeal filed by Dong Yang PC, Inc. against the Controller of Patents and Designs under Section 117A of the Patents Act, 1970. The dispute revolves around the refusal of the appellant's patent application for a “Vertical Rotary Parking System” on grounds of lacking an inventive step under Section 2(1)(ja) of the Act. The key issue is whether the subject invention represents a true technical advancement or is merely a workshop modification of an earlier patent (D-5) by the same applicant.
Factual Background: Dong Yang PC, Inc. filed an Indian Patent Application (No. 2554/DEL/2013) on August 29, 2013, for a “Vertical Rotary Parking System” designed to optimize parking in narrow spaces. The application underwent examination and received its First Examination Report (FER) in August 2018, to which the appellant replied in January 2019.
Subsequently, a pre-grant opposition was filed by Parkerbot India Pvt. Ltd., citing prior art documents D-1 to D-4. A hearing was scheduled in November 2023. Just days before the hearing, the opponent introduced an additional document—D-5—which was not part of the original opposition.
Despite the opponent's absence at the hearing, the Controller relied heavily on D-5 to reject the patent application, claiming that the subject invention lacked inventive step, was obvious to a person skilled in the art, and did not qualify as an “invention” under Section 2(1)(ja) of the Act.
Procedural Background: The patent application was rejected by the Controller of Patents and Designs on April 12, 2024, under Section 15 of the Patents Act. The grounds cited were lack of inventive step, mere reversal of male and female coupling components, and rejection of an amendment request filed under Form-13. Aggrieved, the appellant challenged the decision before the High Court of Delhi by filing C.A. (COMM.IPD-PAT) 60/2024 under Section 117A of the Patents Act. The matter came up for hearing before Hon’ble Ms. Justice Mini Pushkarna.
Legal Issue:The central legal issues for determination were: Whether the subject invention lacked an inventive step under Section 2(1)(ja) of the Patents Act, 1970?Whether the Controller erred in rejecting the amendment of specifications under Form-13?
Discussion on Judgments:
1. Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511
Cited by the Respondent to assert that mere workshop modifications or mechanical alterations without technical advancement do not qualify for patent protection. The Supreme Court had held that if the invention is obvious and lacks novelty, it cannot be patented.
2. Avery Dennison Corporation v. Controller of Patents and Designs, 2022 SCC OnLine Del 3659
Relied upon by the Appellant and discussed by the Court, this case emphasized that even simple inventions, if novel and offering technical advancement, are patentable. The Court highlighted that a significant time gap between the prior art and the current invention may suggest non-obviousness.
3. AGFA NV v. Assistant Controller of Patents and Designs, 2023 SCC OnLine Del 3493
This case discussed the requirements for establishing "common general knowledge". It held that the Controller must cite specific sources and prove that such knowledge existed prior to the filing date.
4. Opentv INC v. Controller of Patents and Designs, 2023 SCC OnLine Del 2771
The Court held that amendments to patent claims can be allowed at the appellate stage as long as they fall within the scope of the original claims and comply with Section 59 of the Act.
5. Knoll Pharmaceutical Company, Inc. v. Teva Pharmaceuticals U.S.A., Inc., 367 F.3d 1381 (Fed. Cir.)
Referenced for the principle that post-filing data may be submitted to support patent validity if consistent with the originally disclosed invention.
6. Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., 655 F.3d 1291 (Fed. Cir.)
Reinforced the rule that post-filing evidence of unexpected results is admissible when consistent with the disclosure in the patent application.
Reasoning and Analysis of the Judge: The court held that the Controller’s decision lacked adequate reasoning on why the modification of the coupling elements was obvious or devoid of technical advancement. The Court noted that simplicity does not negate patentability, and that the alleged interchange of male and female coupling parts resulted in significant improvements including lower noise, better safety, and reduced friction.The Judge also found fault with the Controller's rejection of the Form-13 amendment application. Since document D-5 was not cited in the FER and was introduced only later, the appellant had a right to amend the specification and explain the inventive step. Denial of this amendment was a violation of the principles of natural justice.Further, the Controller’s reliance on “common general knowledge” was not supported by any documentation or expert testimony, which undermined the validity of the refusal.The Court accepted the technical evidence affidavit dated 05.07.2024 submitted by the appellant, emphasizing that post-filing evidence is admissible if consistent with the original invention and helpful in establishing its technical merits.
Final Decision: The High Court of Delhi set aside the impugned order dated April 12, 2024. The matter was remanded to the Controller of Patents and Designs for de novo consideration. The patent application was restored and a fresh hearing was directed to be conducted by a different officer. The Controller was instructed to pass a reasoned order within four months, uninfluenced by the previous decision.
Law Settled in This Case: This case reinforces several important principles in Indian patent jurisprudence: Simple inventions are not necessarily obvious and may still qualify for patents if they provide technical advancement or economic significance.The inventive step must be analyzed not only with reference to prior art but also with substantiated evidence of “common general knowledge”.Applicants have a right to amend specifications even at the appellate stage when new prior art is introduced later in the examination process.Post-filing technical data can be considered to support claims of inventive step if aligned with the original specification.Failure to consider amendment requests and deprive an applicant of a fair hearing constitutes a violation of natural justice.
Case Title: Dong Yang PC, Inc. v. Controller of Patents and Designs:Date of Order: 01 July 2025:Case Number: C.A. (COMM.IPD-PAT) 60/2024:Neutral Citation: 2025:DHC:5124:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Ms. Justice Mini Pushkarna
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
