Mr. Abhishek Sharma Vs. Assistant Controller of Patents and Designs: Foreign Grant of Patent Irrelevant
Case Title: Mr. Abhishek Sharma & Anr. Vs. Assistant Controller of Patents and Designs
Date of Order: February 13, 2025
Case No.: C.A.(COMM.IPD-PAT) 4/2025
Neutral Citation: 2025:DHC:1002
Court: High Court of Delhi
Judge: Hon’ble Mr. Justice Amit Bansal
Introduction:
This case concerns an appeal filed under Section 117A of the Patents Act, 1970, challenging the rejection of a patent application by the Assistant Controller of Patents and Designs. The primary issues in the case revolved around the lack of novelty, lack of an inventive step, and non-patentability under Sections 2(1)(j) and 3 of the Patents Act. Additionally, the appellant sought condonation of a 701-day delay in filing the appeal, which the court refused.
Factual Background:
The appellant, Mr. Abhishek Sharma, filed a patent application (No. 202111053480) on November 21, 2021, titled:"Innovative Change To Solve Any Dispute, Unexpected Business Loss, Closures, Financial Loss, Unexpected Accidents."The subject matter related to the impact of black-colored clothing and accessories on the human brain and external environment.The request for examination (RQ) was converted into an expedited examination under Rule 24C of the Patent Rules on June 7, 2022.The First Examination Report (FER) was issued on June 10, 2022, questioning the novelty, technical merit, and inventive step.A hearing was conducted on September 5, 2022, after which the application was rejected via an order dated November 10, 2022.
Procedural Background:
The appellants, instead of filing an appeal within the statutory period, engaged in discussions with the Patent Office through its online helpdesk.The first ticket regarding the issue was raised only on August 21, 2024, much beyond the prescribed limitation period.On January 6, 2025, the Patent Office informed the appellants that no further reconsideration was possible, and they should seek legal remedies.The appeal was finally filed before the Delhi High Court with an application for condonation of a 701-day delay in filing.
Issues Involved:Whether the delay of 701 days in filing the appeal should be condoned?
Whether the rejection of the patent application was justified under Section 2(1)(j) and Section 3 of the Patents Act, 1970?
Whether the subject matter of the patent was novel and involved an inventive step?
Whether the rejection was in line with established judicial precedents?
Submissions by the Parties
Appellant's Submissions: Condonation of Delay: The appellant argued that the delay in filing the appeal was due to continuous engagement with the Patent Office via the Open House Helpdesk portal.Patentability:The invention had been granted a patent in Germany, implying its novelty and inventive step.The invention provided a technical solution related to human cognition and the effect of colors on decision-making.The rejection was based on an incorrect interpretation of Section 2(1)(j).Inventive Step & Novelty:The black-colored wearing items proposed had a specific scientific effect.
The Examiner’s conclusion was incorrect as it did not consider the application in its entirety.
Respondent's Submissions:Delay in Filing:The appellant failed to provide a valid justification for the inordinate delay of 701 days.Raising a ticket on an online portal does not extend the statutory limitation for filing an appeal.Lack of Novelty & Inventive Step:The black-colored wearing items claimed were already in public use and lacked novelty.The invention was not a technical advancement but merely a psychological theory.No scientific data or experimental results supported the claims.Non-Patentability under Section 3:The alleged invention was an abstract theory and fell within the prohibitions under Section 3(a) and Section 3(c) of the Patents Act.The claim lacked technical features, making it ineligible for a patent under Section 10 of the Act.
The Court examined both the procedural delay and merits of the patent rejection separately.
1. Delay in Filing Appeal:
The period of limitation for filing an appeal against a decision of the Patent Office is three months, with an additional discretionary extension of one month. The Court rejected the appellant's argument that online communication with the Patent Office justified the delay.Reliance was placed on precedents where engagement with administrative authorities did not constitute sufficient grounds for condonation of delay.
2. Merits of the Patent RejectionNon-Patentability under Section 2(1)(j): The Court agreed with the Controller that the subject matter was merely a color-based concept without technical merit.Failure under Section 3(a) & 3(c):The claim was a formulation of an abstract theory, making it unpatentable.It lacked technical structure or industrial applicability.
3.Lack of Novelty and Inventive Step:
The appellant failed to provide any scientific basis or experimental validation for the claimed effects of black-colored wearing items.The invention did not solve a technical problem, a key requirement under patent law.
4.Foreign Grant of Patent Irrelevant:
The Court noted that the appellant did not file any documentary proof of the German patent, nor was there any evidence that it met the standards of Indian patent law.
5.Final Decision:
The delay of 701 days in filing the appeal was not condoned.
The patent rejection was upheld, affirming the Assistant Controller’s order.
The appeal was dismissed both on procedural grounds and on merits.
Legal Principles Settled in this Case:
Engagement with administrative bodies does not extend the limitation period for appeals.
Abstract theories or psychological effects without technical features are non-patentable under Section 3(a) and Section 3(c) of the Patents Act, 1970.
A mere grant of a foreign patent (e.g., in Germany) does not automatically imply patentability in India unless compliance with Indian patent law is demonstrated.
Lack of scientific evidence and experimental data to support claims can lead to rejection under Section 2(1)(j) for lack of novelty and inventive step.
The scope of an invention must be clearly defined in claims; vague assertions without technical details will not be allowed under Section 10.
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Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
