Court Remands Matter for Fresh Consideration, Emphasizes Detailed Examination of Inventive Step
In a significant judgment, the Delhi High Court has set aside the order of the Assistant Controller of Patents and Designs, which had refused the patent application of The Nippon Signal Co., Ltd. The Court, presided over by Justice Jyoti Singh, remanded the case back to the Controller for fresh determination, underscoring the need for a detailed analysis of the inventive step involved in the patent application.
The case revolves around Nippon Signal's invention titled "Redundant Control Device and System Switching Method," which is designed to offer a cost-effective redundant control mechanism for train controllers. The invention aims to shorten the system switchover period without distinguishing between a main and a subordinate system, thereby ensuring seamless operation and significant cost savings.
The Assistant Controller had rejected the patent application on the grounds of lack of inventive step, citing prior arts D1 and D2 as disclosing the features of the claimed invention. However, the High Court found that the Assistant Controller failed to adequately consider the detailed submissions made by Nippon Signal in response to the First Examination Report (FER) and the post-hearing written submissions. The Court noted that the Assistant Controller's order was heavily influenced by prior arts D1 and D2, without a thorough examination of the inventive features highlighted by the appellant.
Justice Singh emphasized that the principles for determining inventive step require a comprehensive analysis of existing knowledge and the motivation for modification. The Court noted that the inventive operational steps and functional interrelationships introduced by Nippon Signal were not analyzed in the impugned order. The Court also cited precedents which stress that the inventive step must be assessed holistically, considering the technical advance and economic significance of the invention.
The judgment directs the Controller to reconsider Nippon Signal's patent application, taking into account the appellant's submissions and the legal standards for determining inventive step. The decision is to be made within four months, following a hearing with the appellant. The Court made it clear that it has not expressed any opinion on the merits of the case.
Bottom line:-
Patent law - Determination of inventive step must involve consideration of detailed submissions regarding prior arts and characterized features of invention.
Statutory provision(s): Patents Act, 1970 Sections 2(1)(j), 2(1)(ja), 15, 117A
