An idea drawn from a jeweller\u2019s cost sheet rather than a designer\u2019s sketchbook can still be turned away at the patent office on the ground that it raises a patent or design question rather than a patentable one. That is precisely the boundary the Madras High Court was asked to redraw when a well-known jewellery brand\u2019s application for a cost-saving gemstone arrangement was refused at the very first hurdle.<\/p>\n
Titan Company Limited (\u201cTitan\u201d) filed Patent Application No. 202041004928 on 4 February 2020, seeking protection for an invention titled \u201cA Jewellery Assembly.\u201d The invention comprises a base member with multiple walls, a segment defined between adjacent walls at an incline, and a central cavity holding one gemstone, surrounded by smaller elongated gemstones at the periphery that together create the visual effect of a single, larger, unified square-shaped stone. According to Titan, this configuration lets jewellers avoid the cost of one large, high-carat diamond by using several smaller stones arranged with precision, addressing a genuine manufacturing and cost problem rather than merely producing an attractive finish. The Controller of Patents & Designs (\u201cController\u201d) rejected the application on 6 February 2024, holding that the claims fell under Section 3(l) of the Patents Act, 1970 (\u201cPatents Act\u201d) and were suitable subject matter for a design application rather than a patent. Titan challenged this rejection before the Madras High Court in a civil miscellaneous appeal filed under Section 117A of the Patents Act.<\/p>\n
The court observed that patent applications carry a limited statutory term, and a significant portion of that term is typically consumed while the application sits before the Controller of Patents & Designs. The court noted that this reality makes it essential for a rejection order to engage with every ground raised in the hearing notice, rather than resting on a single, more convenient finding. Drawing on the reasoning in Adama Makhteshim Ltd. v. The Controller of Patents<\/em> (C.A. (COMM.IPD-PAT) 167\/2022, Delhi High Court, decided 1 May 2023), the court held that an order confined to one objection, while leaving other grounds undiscussed, forces an appellate court to remand the matter rather than examine patentability on the merits, further eroding the patent\u2019s already limited life. The court found that paragraph 14 of the impugned order simply recorded that there was no technical problem and no technical solution, without any engagement with Titan\u2019s written submissions explaining how the gemstone arrangement addressed a manufacturing and cost problem.<\/p>\n The court reasoned that the real dispute, whether the invention presented a patent or design question, could not be resolved on a record where the Controller had not tested Titan\u2019s technical claims against the statutory definition of design. The court referred to Section 2(d) of the Designs Act, which confines design to features of shape, configuration, pattern or ornament judged solely by the eye, and which expressly excludes any mode or principle of construction. The court observed that Titan\u2019s claimed structural arrangement, walls, an inclined segment, a central cavity, and peripheral gemstones performing the function of holding a larger gemstone in place, was not self-evidently confined to visual appeal, and that the Controller\u2019s order gave no reasoned basis for treating it as such. The court further observed that a rejection resting on the patent or design boundary demanded more than a bare assertion; it required the Controller to test the applicant\u2019s stated technical problem against the complete record.<\/p>\n The court stated that fairness required Titan be given an opportunity to address the Controller\u2019s conclusions before a final rejection, particularly where the order failed to discuss submissions already on file. The court opined that the absence of any such engagement, combined with the order\u2019s silence on Titan\u2019s technical contentions, meant the rejection could not be sustained as a speaking order amenable to appellate confirmation.<\/p>\n In view of the observations and the arguments presented by both the parties, the Madras High Court held that:<\/p>\nReopening the Patent or Design Question<\/h3>\n
No Opportunity, No Sustainable Order<\/h3>\n
Findings<\/h2>\n
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