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Refusal of a patent by the Controller of Patents, Designs and Trademarks may be appealed to the high court. Any refusal without adequate reasons, particularly where the invention is held to be obvious, will not survive court scrutiny.

In , the controller rejected a patent application relating to an electrical sub-assembly for use in electric and hybrid vehicles. The refusal denied that the application disclosed an inventive step required by section 2(1)(ja) of the Patents Act, 1970. The controller relied on an untranslated Japanese document for the decision.

The court held that the controller merely reproduced extracts from the hearing notices and failed to consider and analyse the appellant’s submissions. There was no consideration of the objections raised in the first examination report (FER) and the hearing notices. The controller proceeded on an erroneous interpretation and misunderstanding of the subject invention.

The applicant responded to the FER by amending the claims, but no second examination report (SER) was issued. In the hearing notice, the controller cited for the first time a new Japanese document with no English translation. The controller explicitly relied on this document to justify the refusal on the ground of lack of inventive step.

The applicant’s appeal contended that the order was bereft of reasons and cryptic. It was mechanical with no analysis or consideration of the materials relied on by the applicant. The conclusion that the invention was obvious was not supported by any reasoning. Indeed, it was based on a misconception of the invention. The applicant complained of the lack of translation of the Japanese document.

The controller defended the decision, arguing it was adequately reasoned. The controller, however, did not dispute that the law requires a party to provide English translations in all proceedings in which documents are in a foreign language.

The court held that the controller’s referral to prior art in the Japanese document procedure was contrary to the Patents Act, because the material was cited only after a fresh examination and amendments made in response to the FER. The controller breached the provisions of the act by not issuing an SER.

Rules 20(3)(b), 20(5), 20(6), 21(2) and 61(2) of the Patent Rules, 2002 require the provision of English translations. Such a requirement applied to the controller, a matter that was not disputed.

The court found that the respondent used hindsight analysis, despite the Japanese document being silent about the delta configuration of the application device’s electrical connections. The invention did not disclose the configuration upon which the rejection of the application was based. Citing landmark judgments on the test for inventive steps and lack of obviousness, such as Avery Dennison Corporation v Controller of Patents and Designs, F Hoffmann-La Roche Limited v Cipla Limited and Agriboard International LLC v Deputy Controller of Patents and Designs, the court held that it is settled law that objections to an inventive step may only be raised because of prior art and not by creating different versions of embodiments of the prior art with the aim only of rejecting the application.

The court found that the impugned order had no basis to justify the conclusion that the subject invention was obvious. In addition, the additional documents sought to be relied on during the hearing of the appeal cannot add to or supplant the order. The court ruled that findings in the order that, by causing amendments to the first written submission, there was a change in the scope of the invention were unreasoned and unsubstantiated.

A SER report is mandatory when new citations are added after the applicant’s response to the FER. It is mandatory for the controller to supply the English translation of a prior art document relied upon to prove a lack of inventive step. An objection to an inventive step may only be based on prior art and not by creating different versions of embodiments of the prior art to enable a refusal. Breach of any of these conditions will lead to a successful appeal.

The court held that the order was based on surmise and conjecture, set it aside and remitted the matter to a different officer for a fresh hearing.

DPS Parmar is a special counsel at LexOrbis.