Gogoro Inc v. The Controller of Patents and Designs and Anr

1. This hearing has been done through hybrid mode.

2. The appellant- Gogoro Inc. has filed the present appeal challenging the impugned order dated 8th August, 2021 passed by the ld. Asst. Controller of Patents. Vide the impugned order, the Appellant’s application bearing no. 1312/DELNP/2014 for an invention titled "APPARATUS, METHOD AND ARTICLE FOR AUTHENTICATION, SECURITY AND CONTROL OF POWER STORAGE DEVICES SUCH AS BATTERIES” has been rejected by the Patent Office. The application of the Appellant has been refused on the ground that section 2(1)(j) of the Patents Act, 1970 has not been complied with.

3. Ms. Mani, ld. Counsel appearing for the Appellant submits that the impugned order is completely unreasoned. The order seeks to suggest that 2022:DHC:3259 the patent has been rejected for lack of inventive step but in paragraph 5 of the impugned order, it is stated that Section 2(1)(j) of the Act is not complied with. Moreover, it is her submission that all the three prior arts which were cited i.e., D[1], D[2] and D[3] have not been considered by the ld. Asst. Controller while passing the impugned order. Only D[3] has been considered that too without any reason as to why there is lack of inventive step in the invention in question. She further submits that the application of the Appellant had both independent device and independent method claims. However, the independent method claims were also not considered by the Controller and there is no clarity in the impugned order as to which of the claims lack inventive step. Moreover, ld. Counsel for the Appellant also submits that the lack of inventive step can be overcome by amending the claims and Appellant is willing to amend the claims. Ld. Counsel for the Appellant has placed the marked up copy of the proposed amended claims on record.

4. Mr. Harish V. Shankar, ld. CGSC submits that the application of the Appellant has been rejected only on the ground of inventive step and not on the ground of lack of novelty. He further submits that prior arts D[1] and D[2] have been elaborated and dealt with in the FER and prior art- D[3] is elaborated upon in the impugned order.

5. Heard ld. Counsel for the parties. A perusal of the record shows that the present patent application bearing number 1312/DELNP/2014 was filed on 26th July, 2012 as a PCT application bearing no. PCT/US2012/048358 claiming priority from the U.S. patent application number 61/511,900 dated 26th July, 2011. Initially, the claims were amended to delete one claim in the PCT application. The Indian Patent Application No.1312/DELNP/2014 was filed on 20th February, 2014. The request for examination was filed by the Appellant under Rule 24B of the Patent Rules, 2003 on 30th October,

2014. The FER was issued by the Patent Office on 28th August, 2018 raising grounds of lack of novelty, inventive step in view of prior arts D[1] & D[2], and non-patentability under section 3(k) of the Act. After the reply dated 28th February, 2019 was filed by the Appellant to the FER, the hearing was conducted in December, 2020. Written Submissions dated 31st December, 2020 with an amended set of claims were filed with the Patent Office. Finally, vide the impugned order dated 8th August, 2021, the patent application of the Appellant has been rejected. The operative portion of the impugned order would be relevant and is set out below:

6. A perusal of the impugned order shows that there is some confusion as to whether the application was rejected for lack of novelty or for inventive step. Clearly, in the written submissions submitted before this Court, a statement has been made by the Patent Office that the objection of novelty under Section 2(1)(j) of the Act has been dropped. Paragraph 12 & 13 of the written submissions reads as under: