Inventive Step analysis requires a rigorous examination, not surface analysis, says the Delhi High Court.

The Delhi High Court recently set aside an order of the Controller of Patents refusing a patent application relating to “SUSPENSION AND COMPRESSION COIL SPRING FOR SUSPENSION”. The refusal order was set aside as it lacked proper reasoning as required for inventive step analysis.

The Controller of Patents refused the patent application based on 5 prior art references D1 to D5. The operative part of the refusal order as cited by the Court states as follows:

“4. …

“The applicant reply as submitted by the applicant is considered. It is understood that the stress distribution in a wire diameter of a spring is disclosed in the documents D1 that discloses a coil spring having larger and smaller diameter dimension along the material wire which leads to uniform stress distribution as well as reduced weight thereby reducing material as well as cost of the coil spring similar to that of the alleged invention. The alleged invention discloses a different dimensioned wire diameter based on the position in the coil spring suspension. The alleged invention has wire diameter at the lower as well as upper end that has a different dimensioned as compared to the wire diameter at side near to pivot (See alleged invention claim). It has found in the document D2 that compression coil spring has a pigtail shape in which the diameters of the lower end and the upper end are narrower than the diameter of the central portion that is also found in the document D5 have variable dimension of wire diameter of the middle winding as shown in the drawing has larger wire diameter as compared to the end winding. It is also found that the document D4 that smallest rod diameter (wire diameter) as well as the largest rod diameter (wire diameter) lies opposite to each other (See claim 9, drawing of D4). It is found that the features as claimed are found in the cited documents that can obvious to a person skilled in the art, thereby lacking inventive step as per section 2(1)(ja) of The Patents Act 1970 (as amended). The written submission of the agent of the applicant has been carefully considered. However without prejudice, although the hearing submissions have attempted to address the other requirements, yet the substantive requirement of the Patents Act, 1970 i.e. section 2(1)(ja) are not found complied with. Hence, in view of the above and unmet requirements, this instant application is not found in order for grant.”

The Court found that the afore-mentioned reasoning was merely superficial, and that it did not meet the standards required for inventive step assessment. As per the Court, the Controller merely cited D1, D2, D4, and D5, but failed to reason how these prior art references would be combined by a person skilled in the art to arrive at the invention in question. It cited the Windsurfing International v. Tabur Marine ([1985] RPC 59, cited in Avery Dennison Corporation v. Controller of Patents and Designs, 2022 SCC OnLine Del 3659) and Bristol-Myers Squibb Holdings v. BDR Pharmaceuticals International (2020 SCC OnLine Del 1700) cases, and stated that the Controller’s reasons failed the 4 factor test in Windsurfing and the mosaicing test in Bristol-Myers.

The court opined that by primarily focusing on the prior arts D1-D5 without delving into the synthesis of these teachings or their collective impact on a person skilled in the art, the refusal order inadequately addressed the crux of the inventive step. The mere citation and juxtaposition of prior arts do not suffice to establish obviousness. As the Controller did not give proper reasoning about how the teachings in the prior art references would make the invention obvious, the Court set aside the order. It asked the Controller to give an opportunity of hearing within 2 months, and decide the case within 3 months thereafter.

Citation: Nhk Spring Co Ltd. vs Controller of Patents and Designs, High Court of Delhi, 08th February, 2024, C.A.(COMM.IPD-PAT) 296/2022


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