Summary
The Delhi High Court upheld the Patent Office’s rejection of Saint-Gobain’s patent, citing lack of inventive step in the invention related to glass coating.
The Delhi High Court recently upheld the Patent Office’s decision to reject Saint-Gobain Glass France’s application for a glass coating invention. The Court emphasized the absence of inventive step and technical advancement, reinforcing the role of prior art analysis in determining patent eligibility under Indian law.
Facts
Saint-Gobain Glass France (hereinafter “Saint-Gobain”) filed Indian Patent Application No. 201717045317 titled “Material comprising a stack of thin layers”, claiming priority from a French application. The invention related to glazing materials with a transparent substrate and a silver-based functional layer, designed to achieve high external reflection and neutral transmission colours.
The Patent Office (hereinafter “Controller”) raised objections on novelty, inventive step, non-patentability under Section 3(d), and clarity. A pre-grant opposition was also filed, to which Saint-Gobain responded with amended claims and supporting data. After hearings, the Controller refused the application for lack of inventive step under Sections 2(1)(ja) and 25(1)(e), applying the F. Hoffmann-La Roche v. Cipla five-step test (2015 SCC OnLine Del 13619). The Controller held that the claimed advantages were not supported by experimental evidence, showed no significant improvement over prior art, and could be achieved by routine optimisation, rendering the invention obvious.
Aggrieved by this rejection, Saint-Gobain filed an appeal under Section 117A before the Delhi High Court (hereinafter “Court”).
Arguments by Saint-Gobain
Saint-Gobain contended that the Controller misapplied the inventive-step test and engaged in hindsight reconstruction by cherry-picking features from various prior arts without any teaching or motivation to combine them. They argued that the impugned order lacked reasoning to show why a person skilled in the art would combine such prior arts. Saint-Gobain relied on the data presented in the Specification and an expert affidavit to show technical advantages, contending that Section 10 does not mandate numerical data and that the Controller contradicted himself by accepting sufficiency of disclosure while simultaneously citing lack of results.
Arguments by the Controller
The Controller’s counsel argued that the decision was based on a detailed comparative assessment and a correct application of the F. Hoffmann-La Roche v. Cipla five-step test. The opponent ,who filed the pre-grant opposition, submitted that the alleged inventive features of the claimed invention had long been disclosed, and therefore, the results of the claimed invention were obvious.
Issues
- Whether the claimed invention demonstrated any technical advancement over existing knowledge to qualify as an inventive step under Section 2(1)(ja) of the Patents Act, 1970.
- Whether the cited prior art documents anticipated or rendered the claimed invention obvious.
- Whether the Controller’s mosaicing of prior art documents to assess inventive step was justified.
- Whether the Controller correctly applied the standard of a “person skilled in the art” and whether such a person would have been motivated to combine the cited prior arts to arrive at the claimed invention.
Analysis by the Court
On Issue 1: Technical Advancement and Inventive Step
After analyzing the features of the claimed invention, the Court referred to Novartis AG v. Union of India (2013) 6 SCC 1 and stated that, to constitute an inventive step, the claimed invention must show a technical advance or economic significance making it non-obvious. Upon reviewing the data provided in the Specification and the expert affidavit, the Court found no significant improvement in key parameters like solar factor and energy transmission. The Court also noted the differences between the data provided in the Specification and the affidavit, including alterations in the data, and therefore questioned the credibility of the data. Consequently, the Court concluded that the invention failed to establish any technical advancement and therefore lacked inventive step under Section 2(1)(ja).
On Issue 2: Analysis of Prior Art Documents
The Court noted that each of the prior art documents related to the same field and observed that any differences between the claimed invention and prior art amounted to routine optimisation of known parameters, which a skilled person could perform without inventive ingenuity. Relying on Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979) 2 SCC 511 and F. Hoffmann-La Roche Ltd. v. Cipla Ltd. 2015 SCC OnLine Del 13619, the Court opined that the claimed subject matter was an obvious variant of known coatings.
On Issue 3: Mosaicing of Prior Arts
Rejecting Saint-Gobain’s argument that the Controller engaged in impermissible hindsight, the Court opined that combining multiple prior-art references was permissible if a skilled person would naturally be motivated to do so. Citing Section 09.03.03.02 of the Manual of Patent Office Practice and Procedure (2019) and relying on Mahesh Gupta v. Controller of Patents & Designs 2024 SCC OnLine Del 4000 and Pfizer Ltd’s Patent [2001] FSR 16, the Court observed that mosaicing was legitimate when the cited documents addressed related technical problems. Since all the cited references pertained to coated glass substrates with similar functional layers and materials, the Controller’s approach was found legally sound and not based on hindsight.
On Issue 4: Person Skilled in the Art and Motivation to Combine
Placing reliance on Rhodia Operations v. Controller of Patents & Designs (2024 1 HCC (Mad) 140), the Court reiterated that, under Indian law, a “person skilled in the art” possesses a greater-than-average competence, practical knowledge, and common sense, though lacks inventive capacity. The Court affirmed the Controller’s stance in correctly identifying such a person as one conversant with glass manufacturing and construction. It observed that, given that all cited prior arts addressed similar coating structures and objectives, such a skilled person would be naturally motivated to combine them to achieve the claimed results. The Court therefore affirmed that the claimed invention was an obvious outcome of known teachings and upheld the refusal of the patent application.
Conclusion
The Court upheld the Controller’s refusal, finding that the claimed invention did not involve an inventive step under Section 2(1)(ja). It concluded that Saint-Gobain failed to substantiate any technical advancement over existing knowledge, and that combining prior-art teachings to achieve the claimed results would have been obvious to a skilled person. The Court further clarified that patent rights are territorial and the grant of a corresponding patent in France had no bearing on patentability in India. Consequently, the appeal was dismissed, affirming the Controller’s decision.
Citation: C.A.(COMM.IPD-PAT) 13/2024 with I.A. 8216/2024
Available at: https://indiankanoon.org/doc/39134486/
Article review and accessibility review by: Dr. Neetha Mohan
