Delhi High Court pulls up patent office for mechanical decisions sans explanations

The Delhi High Court on Monday expressed concerns about the arbitrary way the patent office routinely decides patent applications and oppositions [Tapas Chatterjee v. Assistant Controller of Patents and Designs & Anr]. 

A Division Bench of Justices C Hari Shankar and Ajay Digpaul observed that for an invention to get a patent, it must be truly new and inventive, not just an obvious improvement over what already exists (prior art).

The Court said that this obviousness has to be examined from the mythical eye of a “person skilled in the art”, but, unfortunately, the Indian Patents Act, 1970 provides no guidelines to steer this process. 

“The result is that the Examiners in the office of the Controller General of Patents, Designs and Trade Marks routinely decide applications for registration of patents, as well as oppositions to such applications, in a rule of thumb manner, purely on the basis of their subjective opinions. This is, clearly, a thoroughly legally unsatisfactory position,” the Court said. 

The Bench made the observation while deciding a plea filed by one Tapas Chatterjee challenging the refusal of a patent application filed for a process to recover potassium sulphate and other valuable products from the residue left over after the alcohol distillation process. It was stated that the invention aimed to provide a simple, economical way to recover potassium sulphate, magnesium sulphate, activated carbon and other by-products from molasses-based alcohol distillery effluent, addressing environmental concerns related to water pollution.

The Council of Scientific and Industrial Research (CSIR) filed a pre-grant opposition to the patent application. The Assistant Controller of Patents upheld objections, concluding that the process was obvious and not patentable.

Chatterjee challenged this order before the High Court, which was rejected by the single judge. He then filed an appeal before the Division Bench. 

After considering the case, the Division Bench said that the manner in which the Assistant Controller of Patents & Designs [AC] dealt with the matter, especially regarding CSIR’s objection based on the alleged lack of inventive step, has reduced the proceedings to a mere mockery. 

"The AC appears to have merely referred to all the prior arts cited before him and returned a finding that each of the prior arts, seen individually or in combination with one or more of the others, would enable a person skilled in the art to arrive at the process which the appellant sought to patent. How, is anybody’s guess,” the Court said. 

Further, the Division Bench said that the manner in which the AC passed the order underscores the dangers of the lack of any guidance based on which the aspect of obviousness of the subject invention in relation to prior art is to be gleaned. 

“There may be occasions in which the aspect of obviousness of the subject invention vis-à-vis prior art is plain at a bare glance at the complete specifications of the prior art and of the subject invention. Equally, however, there may be cases in which it is not apparent, by a mere reading of the complete specifications of the prior art and the subject invention, that the latter is obvious to a person skilled in the art from the former. In such a case, in our view, it is incumbent on the Adjudicating Officer in the office of the CGPDTM, adjudicating on the application for grant of patent, to set out, clearly and explicitly, his reasons for holding that the teachings in the prior art document would by themselves suffice to enable a person skilled in the art to arrive at the claims in the subject invention. It cannot, as in the present case, be left to a mere finding, unsupported by any reasons whatsoever, that the claims in the complete specification relating to the subject invention are obvious from the prior art."

Finally, the Court set aside the patent office’s order and directed it to decide the application as well as the objection by CSIR afresh in six months.

Advocates Pravin Anand, Prachi Agarwal, Arpita Kulshrestha and Elisha Sinha appeared for the appellant.

Advocates Vijay Joshi, Kuldeep Singh and Shubham Chaturvedi represented the Assistant Controller of Patents and Designs. 

Advocates Vindhya S Mani, Ritvik Sharma, Naina Gupta, Bhuvan Malhotra, Surbhi Nautiyal, Harshita Agarwal, Devesh Aswal and Vedika Singhvi appeared for CSIR.

[Read Judgment]