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Date of Decision: 17th April, 2025 C.A.(COMM.IPD-PAT) 342/2022
THE COCA-COLA COMPANY .....Appellant
Through: Mr. Rohit Rangi, Mr. Vineet Rohilla, Mr. Pankaj Soni, Mr. Debashish Banerjee, Mr. Ankush Verma and Mr. Tanveer Malhotra, Advocates.
Through: Mr. Arnav Kumar, CGSC
JUDGMENT
1. The present appeal has been filed against the order of the Respondent dated 29th January, 2020, refusing the grant of the Indian Patent Application No. 1771/DELNP/2010 (hereinafter ‘the subject application’) under Section 15 of the Patents Act, 1970 (hereinafter ‘the Act’) on the ground that the claimed invention lacks inventive step.
2. The invention impugned in the subject application relates to a beverage dispenser which is superior to the conventional beverage dispensers. This dispenser overcomes the limited capacity and selection of conventional machines to offer more beverage variety and customization.
3. The respondent had issued First Examination Report (hereinafter “FER”) on 7th August, 2017, raising various objections against the subject application, which are as follows: a. Lack of novelty and inventive step under section 2(1)(j) of the Act b. Not patentable under section 3(k) of the Act c. Lack of sufficient disclosure under section 10(4)(b) d. Lack of clarity and unity under section 10(4)(c) and 10(5) of the Act.
4. The appellant had filed a detailed response addressing the objections raised in the FER on 5th March, 2018.
5. Thereafter, the respondent had passed a hearing notice on 24th September, 2019 containing following objections: a. Lack novelty and invention under section 2(1)(j) of the Act. b. Not an invention under section 3(k) of the Act.
6. Subsequently, a hearing was conducted on 10th October, 2019 and written submissions were filed by the appellant on 25th October, 2019.
7. Vide the impugned order the respondent refused the grant of patent on the ground that the invention impugned in subject application lacks inventive step as required under section 2(1)(ja) in view of prior-arts D1- US6152591, D3-US5974396A, D4-US6990391B[1] and D5- WO2005091843A[2].
8. The grievance of the appellant is that the appellant had distinguished all the aforesaid prior arts cited by the Assistant Controller in the hearing notice, through the post-hearing written submissions. However, it is submitted that the impugned order has been passed in a cryptic manner, without analysing the submissions made on behalf of the appellant regarding the distinction between the subject patent application and the prior-arts. The operative part of the impugned order is set out below:-
household appliances, income, pet information, and any other characteristic features that may identify particular consumers and particular consumer preferences/needs.” D[4] discloses a controller to dispense the beverage. D[5] discloses a royalty reward points program. Therefore, in view of cited prior arts the steps as claimed in written submission are obvious and not inventive.
5. The oral argument and the written submission of the agent of the applicant have been carefully considered. However without prejudice, although the hearing submissions have attempted to address the other requirements, yet the substantive requirement of the Patents Act, 1970 i.e. Section 2(1)(j) is not found complied with. Hence, in view of the above and unmet requirements, this instant application is not found in order for grant.”
9. A perusal of the aforesaid extracts from the impugned order shows that it has been passed without addressing the submissions of the appellant or demonstrating proper application of mind. The appellant had placed on record, in their written submissions, various arguments distinguishing the prior arts from the subject invention. However, the same have not been considered in the impugned order. The order lacks reasoning capable of withstanding judicial scrutiny.
10. 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 (hereinafter “Agriboard”). The relevant observations are set out below:
11. The aforesaid judgement in Agriboard (supra) has been followed by me in Rosemount Inc. v. Deputy Controller of Patents and Designs 2023 SCC Online Del 2487 and Marelli Europe S.P.A. v. The Deputy Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 21/2024.
12. Therefore, it is a settled position that the Patent Office is required to pass a speaking order analysing what is the existing knowledge and how the subject invention lacks inventiveness in light of the prior art. In the impugned order, the Controller has not analysed the subject application in light of the post-hearing written submissions of the appellant and has failed to give a reasoned order.
13. Accordingly, the impugned order is set aside and the matter is remanded back to the Patent Office for a fresh consideration.
14. The Controller would afford a fresh opportunity of hearing both sides before deciding the subject patent application after giving a hearing notice to the appellant.
15. Needless to state that the fresh order passed by the Controller will deal with the valid submissions raised on behalf of the appellant.
16. The present appeal stands disposed of in terms of the aforesaid.
17. The Registry is directed to supply a copy of the present order to the office of the Controller General of Patents, Designs & Trade Marks of India on the e-mail- llc-ipo@gov.in for compliance. AMIT BANSAL, J APRIL 17, 2025