Background
This case involves an appeal filed by Marelli Europe S.P.A. in the Delhi High Court under the Patents Act, 1970, challenging the order dated December 28, 2023, issued by the Deputy Controller of Patents and Designs. The order rejected the appellant’s Indian Patent Application No. 495/DEL/2013, filed on February 21, 2013, for an invention titled "Hydraulic Servo-Control of a Servo-Controlled Gearbox," with a priority date of February 22, 2012, from an Italian application.
Grounds of Rejection
The respondent rejected the patent application on the ground of lacking an inventive step under Section 2(1)(ja) of the Patents Act, 1970, citing five prior art documents (D1 to D5). The impugned order was issued after the First Examination Report, the appellant’s response, a hearing on January 10, 2023, and post-hearing submissions.
Appellant’s Grievance
Marelli Europe S.P.A. argued that the impugned order was mechanically passed without reasoned justification. The section explaining why the invention lacked inventiveness merely reproduced extracts from prior art documents without analyzing how they applied to the subject invention. The appellant’s detailed submissions distinguishing the prior arts were ignored, and the Controller’s observations lacked any substantive reasoning.
Legal Precedent
The court referenced Agriboard International LLC v. Deputy Controller of Patents and Designs, which mandates that rejecting a patent for lack of inventive step requires analyzing the prior art, the subject invention, and the obviousness to a person skilled in the art. The court also cited Art Screw Co., Ltd. v. The Assistant Controller of Patents and Designs, emphasizing that rejecting an invention for lack of inventive step is a serious finding requiring thorough evaluation.
Respondent’s Position
The respondent introduced new material in their counter affidavit, alleging suppression by the appellant. However, this material was not referenced in the impugned order, and the court held that it could not consider new averments raised for the first time in the affidavit, as the appeal was confined to the record before the Patent Office.
Court’s Findings
The Delhi High Court, presided over by Justice Amit Bansal, found the impugned order deficient for failing to provide reasoned analysis. The Controller’s mere reproduction of prior art extracts and conclusory statement on lack of inventive step did not meet the standards of natural justice or statutory requirements. The court deemed the order mechanically passed and unsustainable under judicial scrutiny.
Outcome
The court set aside the impugned order and remanded the matter to the Patent Office for fresh consideration by a different officer. The Controller was directed to provide a fresh hearing, include any new material in the hearing notice for the appellant’s response, and decide the application within three months, given its filing date in 2013. All contentions were kept open.
