Without Proper Inventive Step Analysis, Patent Office’s Order is Unreasoned – Says Delhi High Court

In a recent case involving Gogoro Inc, the Delhi High Court remanded a patent decision back to the patent office on the ground that the order was unreasoned. The Controller of Patents in the case rejected the patent application filed by Gogoro Inc relating to a power charging system on the ground that it lacked inventive step. The Controller cited three prior art references but failed to explain how a person skilled in the art would arrive at the claimed invention as of the date of the application based on the cited prior art references. In the absence of such an analysis as required under Section 2(1)(ja), the Court stated that the decision becomes unreasoned. The Court in the case allowed  Gogoro Inc to file amendments to its patent claims and asked the Controller to examine the patent application once again expeditiously.

Relevant Case Excerpts

Relevant paras of the case read as follows:

  1. History and Order of the Controller

“5. Heard ld. Counsel for the parties. A perusal of the record shows that the present patent application bearing number 1312/DELNP/2014 was filed on 26th July, 2012 as a PCT application bearing no. PCT/US2012/048358 claiming priority from the U.S. patent application number 61/511,900 dated 26th July, 2011. Initially, the claims were amended to delete one claim in the PCT application. The Indian Patent Application No.1312/DELNP/2014 Signature Not Verified By:DEVANSHU JOSHI Signing Date:26.08.2022 12:24:40 was filed on 20th February 2014. The request for examination was filed by the Appellant under Rule 24B of the Patent Rules, 2003 on 30th October, 2014. The FER was issued by the Patent Office on 28th August, 2018 raising grounds of lack of novelty, inventive step in view of prior arts D1 & D2, and non-patentability under section 3(k) of the Act. After the reply dated 28th February, 2019 was filed by the Appellant to the FER, the hearing was conducted in December, 2020. Written Submissions dated 31st December, 2020 with an amended set of claims were filed with the Patent Office. Finally, vide the impugned order dated 8th August, 2021, the patent application of the Appellant has been rejected. The operative portion of the impugned order would be relevant and is set out below:

“4. In view of claims made in written submission following observations with respect to instant invention made :

The alleged invention is claiming a power charging system to a portable device i.e. battery and other devices that can be charged/receive power from the portable charged device.

Further, the feature of the invention is to control such access between two devices on charging based upon some authentication which allow access to the portable device to get power to other device and that portable device can get power.

In view of these claims of the alleged invention the cited prior arts discloses all features of the alleged invention.

D3 discloses Power transfer between devices such as laptop computers, mobile phones, personal digital assistants, media players and other devices is described. In an embodiment power transfer is achieved either from a power source at a device or to a power source at that device using a bidirectional power transfer connector (paragraph [0005]).

The power source 206 can be an internal (or external) rechargeable battery, such as a Lithium Ion battery, Lithium Polymer battery or Nickel-Metal Hydride battery (paragraph [0023]).

The device 200 may also include a power management module 210 which is arranged to control the transfer of power to or from particular connectors 212 or devices (paragraph [0026]).

The power transfer protocol 216 can also optionally carry out authentication and/or security checks 304. For example in the case of a peripheral device connected to a computing device the power transfer protocol may check whether or not the peripheral device is registered to the computing device and therefore allowed to share power. In the case of two peripheral devices, the authentication may check that both devices are registered to the same person (paragraph [0036]).

Since both the features as claimed by the alleged invention are being disclosed by the cited prior art D3 alone, further features are not contributing to the inventive features in the instant invention.

Therefore in view of disclosures in the D1-D3 as explained above, all the features of the alleged invention are obvious and known; the instant invention fails to show any further inventive step.

  1. The oral argument and the written submission of the agent of the applicant have 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)(j) is not found to comply with. Hence, in view of the above and unmet requirements, this instant application is not found in order for grant.
  1. Therefore, keeping in view the above facts, the submissions of the agents during the hearing and subsequently through the written submission, as well as the outstanding official requirements, instant application no. 1312/DELNP/2014 dated 20/02/2014 does not comply with the requirements of The Patents Act, 1970 (as amended). I, therefore, hereby order that the grant of a patent for application no.1312/DELNP/2014 is refused under the provisions of Section 15 of The Patents Act, 1970 (as amended).
  1. This is to be noted that the aforesaid observations, and decision thereof, are based solely on the electronically uploaded documents to date.”

  1. Court’s Analysis

“6. A perusal of the impugned order shows that there is some confusion as to whether the application was rejected for lack of novelty or for inventive step. Clearly, in the written submissions submitted before this Court, a statement has been made by the Patent Office that the objection of novelty under Section 2(1)(j) of the Act has been dropped. Paragraph 12 & 13 of the written submissions reads as under:

“12. The objection of NOVELTY under section 2(1)(j) has been dropped at the hearing stage and clearly as mentioned in the hearing notice, the subject matter of alleged invention for not being inventive raised under section 2(1)(ja).

“13. Cited prior arts D1-D3 were not cited for NOVELTY, but for the inventive step as mentioned in the hearing notice. Section 2(1)(j) also includes section 2(1)(ja) for purpose of inventive step.”

  1. Thus, the only surviving objection is in respect of lack of inventive step. Qua the said objection, the Controller has cited three prior arts i.e.D1 to D3. Though in the FER, prior arts D1 and D2 and the manner in which they support the lack of inventive step is slightly elaborated, insofar as impugned order is concerned, only prior art D3 seems to have been considered. Moreover, while arriving at the conclusion that there is a lack of inventive step, there is no elaboration or reasons given by the Controller for the said finding at all. For the Controller to find lack of inventive step, some discussion was required as to how the prior arts render the subject invention obvious to a person skilled in the art.
  1. This Court in the case of Agriboard International LLC. v. Deputy Controller of Patents & Designs [C.A.(COMM.IPD-PAT) 4/2022 dated 31st March, 2022] has held that while rejecting an application for lack of inventive step, discussion on prior art, the subject invention and manner in which the subject invention would be obvious to a person skilled in the art is mandatory. Merely arriving at a bare conclusion that the subject invention lacks inventive step would be contrary to Section 2(1)(ja) of the Act itself. The relevant portion of the judgment reads as under:
  1. In the opinion of this Court, while rejecting an invention for lack of inventive step, the Controller has to consider three elements- . the invention disclosed in the prior art, . the invention disclosed in the application under consideration, and . the manner in which subject invention would be obvious to a person skilled in the art.
  1. Without a discussion on these three elements, arriving at a bare conclusion that the subject invention is lacking inventive step would not be permissible, Signature Not Verified By: DEVANSHU JOSHI Signing Date:26.08.2022 12:24:40 unless it is a case where the same is absolutely clear. Section 2(1)(ja) of the Act defines `inventive step’ as under:

(ja) “inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.

  1. Thus, the Controller has to analyse as to what is the existing knowledge and how the person skilled in the art would move from the existing knowledge to the subject invention, captured in the application under consideration.Without such an analysis, the rejection of the patent application under Section 2(1)(ja) of the Act would be contrary to the provision itself. The remaining prior arts which are cited by ld. Counsel having not been considered in the impugned order, the Court does not wish to render any opinion in this regard.
  1. In view of the above judgment, completely unreasoned nature of the impugned order passed by the ld. Asst. Controller and the fact that there is no discussion as to why the application is being held to be lacking inventive step in view of the prior arts D1, D2 and D3, the impugned order is liable to be set aside and the application is restored to its original position.”

Citation: Gogoro Inc vs The Controller Of Patents, Decided by Delhi High Court on 24 August, 2022, available at: https://indiankanoon.org/doc/154889802/, visited on 29th August 2022.

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