Summary
The Delhi High Court overturned the Controller’s rejection of Coca-Cola’s patent for a beverage dispenser, citing lack of a reasoned inventive step analysis. The court stressed the importance of thorough evaluations and clear reasoning in patent refusals.
Introduction
The Delhi High Court recently set aside the Controller’s decision rejecting Coca-Cola’s patent application for a beverage dispenser in the case of ‘The Coca-Cola Company v. The Controller of Patents & Anr.’, holding that the refusal order was merely issued on the grounds of lack of inventive step without adequate consideration.
Facts of the Case
The present appeal arises from an order dated 29th January 2020 passed by the Controller of Patents (“Controller”), wherein the patent application no. 1771/DELNP/2010 filed by The Coca-Cola Company (“Coca-Cola”) was refused. Coca-Cola’s invention pertained to a beverage dispenser superior to the conventional machines by offering more beverage variety and customization options.
During prosecution, Coca-Cola responded to the First Examination Report (FER) issued by the Controller, objections based on lack of novelty, inventive step, clarity, and patentability under Sections 2(1)(j), 3(k), 10(4)(b), 10(4)(c), and 10(5) of the Act. In its detailed response, Coca-Cola also distinguished its dispenser from the prior art references cited in the FER. Subsequently, in response to the hearing notice, Coca-Cola filed a comprehensive post-hearing submission, further providing technical details to differentiate the claimed dispenser from the cited prior art.
Despite all the submissions, the patent application was refused by the Controller, primarily on the grounds of lack of inventive step in view of prior art documents, D1, D3, D4, & D5.
Grounds of Refusal by the Controller
The Controller held that features like the graphical interface, wireless ID reader, and consumer data collection via card readers were already disclosed in cited prior art documents and thus not inventive under Section 2(1)(j) of the Act.
Arguments Provided by Coca-Cola
Coca-Cola argued that it had distinguished all the prior art references cited by the Controller in the hearing notice through its post-hearing written submissions. However, the impugned order was passed in a cryptic manner, without any analysis of the submissions made regarding the distinctions between the subject patent application and the cited prior art.
Court’s Analysis
The Court found that the impugned order had been issued without adequately considering Coca-Cola’s submissions or demonstrating a reasoned application of mind. The court observed that, despite Coca-Cola having placed detailed written arguments on record distinguishing the claimed invention from the cited prior art, these submissions appeared to have been overlooked. Therefore, in the absence of substantive reasoning, the order lacked the necessary justification to withstand judicial scrutiny.
The Court stated that three elements must be analyzed when assessing inventive step: 1) the invention disclosed in the prior art, 2) the invention disclosed in the application under consideration, and 3) the manner in which the subject invention would be obvious to a person skilled in the art. Accordingly, the Controller is required to assess the existing knowledge and provide a reasoned explanation as to how the invention either advances beyond or is rendered obvious by it. In the absence of such analysis, a mere conclusion that the invention lacks inventive step is impermissible unless the lack of inventiveness is self-evident.
The Court noted that the judgment in Agriboard (supra) has been consistently followed by the Court in cases such as Rosemount Inc. v. Deputy Controller of Patents and Designs (2023) and Marelli Europe S.P.A. v. The Deputy Controller of Patents and Designs (2024). It is now a settled position that the Controller must issue a speaking order that carefully analyzes the existing state of knowledge and explains how the claimed invention lacks inventiveness in light of the prior art documents. The court further noted that in the impugned order, the Controller neither considered Coca-Cola’s post-hearing written submissions nor provided a reasoned decision, thereby falling short of the standards required by law.
Conclusion
The Delhi High Court set aside the impugned order and remanded Coca-Cola’s patent application to the Controller for reconsideration. Further, the court directed that the Controller’s fresh order must fully take into account the substantive and valid arguments submitted by Coca-Cola.
Citation: The Coca-Cola Company (Appellant) vs The Controller of Patents (Respondent), C.A.(COMM.IPD-PAT) 342/2022 (H.C. Delhi April 17, 2025). Available at: https://indiankanoon.org/doc/76058194/
Authored by Dr. Rukaya Amin Chowdery, Patents Team, BananaIP Counsels.
Article review by Dr. Vasundhara Paliwal
Accessibility review by Gaurav Mishra