This is a judgment from the High Court of Delhi in the case of NIPPON STEEL CORPORATION versus THE CONTROLLER GENERAL OF PATENTS, DESIGNS & TRADEMARKS & ANR., regarding the refusal of a patent application for a method and device for repairing the inside of a gas flue or coke oven. The application was initially refused by the Assistant Controller of Patents and Designs under Section 15 of the Patent Act, 1970, citing lack of novelty and inventive step, and later under Section 3(d) of the Act for being a mere use of a known device.
The appellant, NIPPON STEEL CORPORATION, argued that the refusal under Section 3(d) was unjustified since no explicit objection was raised during the hearing, violating the principles of natural justice and the Controller General's Circular No.4 of 2011. They also contended that the method of repairing involves technical steps and should be patentable.
The respondent, THE CONTROLLER GENERAL OF PATENTS, DESIGNS & TRADEMARKS & ANR., supported the refusal, stating that the method claims were merely the application of the device components and part of the device's operating manual, thus falling under Section 3(d) as a non-patentable invention.
The Court's analysis found that the Controller erred in classifying the invention as a mere use of a known device without identifying the known device or process, and without providing a reasoned order. The Court also noted that the Controller failed to apply the proper tests for patent eligibility and did not address the novelty and inventive step of the device claims.
The Court's findings led to the following directions:
The impugned order is set aside, and the matter is remanded for fresh consideration.
The patent application is restored to its original number.
The appellant is to be granted a hearing with clear delineation of objections, including questions on the nature of Claim no.1 and the novelty, inventive step, and industrial application of the invention.
The Controller is directed to render a final decision within four months of the hearing.
The Court's judgment emphasizes the importance of a reasoned order, proper application of patentability tests, and adherence to the principles of natural justice in the patent examination process.
Case Citation: Nippon Steel Corporation Vs Controller of Patent: 29.08.2024: 2024:DHC: 6514: C.A.(COMM.IPD-PAT) 323/2022: DHC: Saurabh Banerjee, H.J.
Written by: Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney] United & United
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