'Completely Unreasoned Order': Madras HC Directs Controller To Reconsider Saint-Gobain's Patent Application For Invention ‘Nonwoven Article’
The Madras High Court has directed theController of Patents and Designs re-consider a patent application filed by Saint-Gobain for the invention entitled ‘NONWOVEN ARTICLE’.
Saint-Gobain had filed a Civil Miscellaneous Appeal (Patents) under Section 117-A of the Patents Act, 1970 against the order of Controller by which their patent application was rejected.
A Single Bench of Justice Senthilkumar Ramamoorthy directed, “As a corollary, the patent application is remanded for re-consideration on the following terms and conditions: (i) In order to preclude the possibility of pre-determination, an officer other than the officer who issued the impugned order shall undertake such re-consideration. (ii) After providing a reasonable opportunity to the appellant, including an opportunity to amend the claims or complete specification, as deemed necessary and appropriate, a reasoned decision shall be issued within a period of six months from the date of receipt of a copy of this order.”
Advocate S. Shivathanu Mohan represented the appellants while CGSC K. Subbu Ranga Bharathi represented the respondent.
Facts of the Case -
A patent application was filed and upon submitting a request for examination, the respondent i.e., Controller issued the First Examination Report (FER). In the FER, objections were raised inter alia on grounds of lack of novelty, inventive step, unity of invention, sufficiency of disclosure and lack of clarity and definitiveness. The foreign nationals (appellants) replied thereto and submitted amended claims. Pursuant to hearings, the said nationals filed final written submissions and eventually, the application was rejected vide an order.
The counsel for the foreign nationals submitted that the claimed invention was in respect of a nonwoven Article. In this connection, he invited the attention to the amended claims at pages 206 to 208 of the paper book. By turning to the impugned order, the counsel submitted that the application was rejected on the following three grounds:
(i) lack of sufficient disclosure;
(ii) lack of clarity and definitiveness; and
(iii) obviousness.
The High Court in the above context of the case observed, “The reasons specified in the impugned order for refusing the application relate largely to the alleged insufficiency of disclosure. The first ground on which such conclusion was drawn is that the appellants have not disclosed the technique / method to make a nonwoven substrate with higher thickness of the coating at the exterior surface and lower thickness of the coating at the central region. As correctly pointed out by learned counsel for the appellant, in paragraphs [0079] to [0083] of the complete specification, the entire process appears to have been set out by the appellant. The impugned order does not draw reference to these relevant paragraphs of the complete specification.”
The Court said that even if the respondent was of the opinion that the specified range is too wide, it is always possible to call upon the patent applicant to amend the claim and the complete specification suitably.
“As regards the objection on lack of definitiveness, the first ground for drawing such conclusion is that the expression "greater" is unclear. In response to this, learned counsel for the appellant pointed out that independent claim 1 indicates that the thickness of the exterior surface should be greater than that of the central portion by at least 1% and not more than 50%. This aspect has also not been taken into account in the impugned order”, also said the Court.
The Court noted that the conclusion with regard to the lack of inventive step in the impugned order is unreasoned and such conclusion is drawn without any prior art reference.
“As regards the second ground relating to definitiveness, i.e. the conclusion that the expressions "exterior surface" and "central region" were not clearly defined, learned counsel for the appellant responded to this by referring to the written submissions and the diagrammatic representations set out therein. On this issue, it is again possible for the respondent to call upon the patent applicant to incorporate such explanation in the complete specification”, observed the Court.
Accordingly, the High Court disposed of the application and set aside the impugned order.
Cause Title- Saint-Gobain Abrasives, Inc. & Anr. v. The Controller of Patents and Designs (Neutral Citation: 2023:MHC:5186)
