Marelli Europe S.P.A. v. Deputy Controller of Patents and Designs

1. The present appeal has been filed against the order of the respondent dated 28th December, 2023, refusing the grant of the Indian Patent Application No. 495/DEL/2013 (hereinafter ‘subject patent application’) filed on 21st February, 2013, having priority date of 22nd February, 2012 from an application filed in Italy bearing no. ITBO20120085Al in respect of the invention titled ‘HYDRAULIC SERVO-CONTROL OF A SERVOCONTROLLED GEARBOX’.

2. The subject patent application was published under Section 11A of the Patents Act, 1970 on 16th January, 2015. The First Examination Report was issued by the respondent on 6th February, 2019, which was replied to by the appellant on 6th August, 2019. Thereafter, a hearing was held before the respondent on 10th January, 2023, and post hearing submissions were filed on 24th January, 2023.

3. The respondent, vide order dated 28th December, 2023 (hereinafter ‘impugned order’), has rejected the subject patent application on the ground of lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970 in view of prior art documents D[1] to D[5], which are, Dl: (US4875665A) D[2]: (US3875748A) D[3]: (US20020035832Al) D[4]: DE 10143830 D[5]: US 3537357

4. The grievance of the appellant is that the respondent has passed the impugned order in a mechanical manner without providing any reasoning or justification for the same. It is submitted that in the section of the impugned order ‘why present alleged invention is not inventive’, the respondent has simply copied the extracts from the prior art documents. The respondent has not given any reasoning as to how the subject invention is covered by the cited prior art documents D[1] to D[5].

5. It is also the grievance of the appellant that in the section of the impugned order ‘My observation/opinion’, no reasons have been given as to why the subject patent application lacks inventive step.

6. The respondent has simply given his conclusion that the subject patent application cannot be considered as inventive under Section 2(1)(ja) of the Patents Act, 1970.

7. At this stage, reference may be made to the judgment of a Coordinate Bench of this Court in Agriboard International LLC v. Deputy Controller of Patents and Designs, 2022 SCC OnLine Del 940. The relevant observations are set out below:

8. The Court has carefully perused the impugned order. A perusal of the impugned order shows that in the section of the impugned order dealing with ‘why present alleged invention is not inventive’, the respondent has simply copied extracts from the prior art documents. The respondent has not given any reasoning as to how the subject invention is covered by the cited prior art documents D[1] to D[5]. The appellant had filed detailed submissions before the respondent seeking to distinguish cited prior arts from the subject invention, however, the impugned order has not analysed the reasoning offered by the appellant.

9. Mr. Ranjan Narula, counsel for the appellant, has relied upon the judgment of a Coordinate Bench of this Court dated 14th December, 2022 in Art Screw Co., Ltd. v. The Assistant Controller of Patents and Designs, 2022/DHC/005571, wherein a similar order was passed rejecting the patent application, in which the Court had observed that the respondent has simply set out the disclosures contained in the prior arts therein. The relevant observations made in Art Screw (supra) are set out below:

10. Counsel for the respondent submits that after the impugned order was passed, some additional material has come to the knowledge of the respondent which according to the respondent, the appellant has failed to disclose.

11. However, a reference to new material as well as the alleged suppression by the appellant has been made for the first time by the respondent in the counter affidavit filed before this Court. There is no reference to such additional material or the element of suppression in the impugned order.

12. This Court in the present appeal is examining the correctness of the impugned order passed by the respondent and the appeal has to be decided on the basis of the material on record before the Patent Office when the subject patent application was adjudicated.

13. Clearly, at this stage, the Court cannot look into the aspect of new material which has come to the knowledge of respondent and in respect of which averments have been made for the first time in the counter affidavit. It is a settled position of law that the impugned order cannot be improved by the averments made in the counter affidavit.