In B.V. Draka Comteq v/s The Controller Of Patents, Designs & Trademarks, a patent appeal was filed under Section 117A of the Patents Act, 1970, challenging an order passed by the Assistant Controller of Patents and Designs. The appeal was focused on the refusal of Patent Application No. 2791/DELNP/2010, which involved an invention related to a "Multimode Fiber." The appellant contended that the subject invention was novel and involved an inventive step, contrary to the conclusions drawn by the Assistant Controller. This article outlines the background of the case, the legal arguments presented, and the subsequent analysis and decision-making process involved in the appeal.
Background of the Case:
The subject application in question was filed by the appellant on April 22, 2010, as part of the national phase entry of a Patent Cooperation Treaty (PCT) application. The invention titled "Multimode Fiber" sought to address advancements in the field of optical fiber transmission systems, particularly for short-distance transmission systems requiring high bandwidth. The patent application sought protection for a fiber optic design that incorporates specific doping methods to improve transmission quality.
The initial examination of the patent application raised objections based on the lack of novelty and inventive step. Specifically, the Controller of Patents pointed to a prior art document, D3, which allegedly disclosed features similar to those claimed in the application. Despite the appellant's efforts to clarify these issues, the Assistant Controller ultimately refused the application in November 2019.
The Impugned Order and the Grounds for Refusal:
The refusal was based on two primary objections: lack of novelty and lack of inventive step, as defined under Section 2(1)(j) of the Patents Act, 1970. According to the Controller, the features claimed in the subject invention were already disclosed in the prior art document D3. This document, titled "Graded-Index Multimode Fiber and Manufacturing Method Therefor," detailed an optical fiber with certain characteristics similar to those of the claimed invention, such as the use of multiple dopants in the core and cladding.
The Assistant Controller concluded that the claimed invention lacked novelty due to its overlap with D3. Furthermore, the Controller determined that the invention did not involve an inventive step, as the modifications presented were considered obvious to a person skilled in the field of optical fiber technology.
Appellant’s Arguments:
The appellant, represented by Mr. Rohit Rangi, Advocate, vehemently disagreed with the Controller's assessment. One of the primary arguments presented was that the prior art D3 did not disclose the feature of "depressed cladding" as claimed in the subject application. The appellant argued that D3's mention of an "alpha profile" did not equate to the specific feature of "depressed cladding" with a lower refractive index than the outer cladding, a crucial characteristic of the claimed invention.
Additionally, the appellant highlighted that the D3 document did not address the issue of "continuous variations in the alpha profile," which was a key element of the subject invention. The combination of two dopants, Germanium and Fluorine, in both the core and the depressed cladding was a novel aspect not disclosed by the prior art.
Respondent’s Defense:
On the other hand, the respondent, represented by Ms. Rukhmini Bobde, defended the Controller's decision. The respondent argued that although the term "depressed cladding" was not explicitly mentioned in D3, the document's reference to an "alpha profile" implicitly covered the claimed feature. Moreover, the respondent maintained that the subject application's claims were too similar to D3, and therefore, the invention lacked novelty and inventive step.
Legal Analysis and Findings:
Upon reviewing the case, the court emphasized the importance of novelty and inventive step in determining the eligibility of a patent application. Novelty is a fundamental requirement for a patent, meaning that the invention must not be disclosed by any prior art document. In this case, the court found that the subject invention contained distinct features—particularly the "depressed cladding" and the specific co-doping technique with Germanium and Fluorine—that were not disclosed in D3.
The court also addressed the issue of inventive step. While the Assistant Controller’s order lacked a detailed analysis of inventive step, the court referred to legal precedents that stressed the need for a reasoned decision, taking into account all relevant elements, including the differences between the prior art and the claimed invention. The court concluded that the impugned order lacked sufficient reasoning regarding the inventive step and remanded the case for a fresh examination.
Conclusion and Outcome:
The appeal was ultimately upheld, and the refusal order was set aside. The case was remanded to the Patent Office for fresh consideration, with a directive to issue a reasoned decision based on a comprehensive analysis of all relevant considerations. The decision underscores the importance of a detailed and reasoned examination of patent applications, particularly when addressing objections related to novelty and inventive step.
This case serves as a reminder of the rigorous standards that patent applications must meet to secure protection under the Patents Act, 1970, and the critical role of clear, well-supported reasoning in patent refusal decisions.
Section 61, Patents (Amendment) Act - 2005
Patents Act, 1970
