Calcutta High Court: Under Patents Act, while determining inventive steps, invention should be considered as a whole

Calcutta High Court: Under Patents Act, while determining inventive steps, invention should be considered as a whole

The Calcutta High Court observed that for applying the test of inventiveness of an invention sought to be registered under the Patents Act 1970, the same must be applied by considering the invention as a whole. The Court further noted with respect to determining the obviousness of such invention, the Court ought to apply such standard strictly and objectively without dissecting such application for registration into isolated elements.

The Court was hearing an appeal filed under Section 117A(2) of the Patents Act, wherein the appellant- Groz-Beckert Kg was assailing an order dated 10 March, 2022 passed by the Assistant Controller of Patents and Designs (hereinafter referred to as the order) rejecting the appellant's patent application for registration of an invention titled "Head for processing Tape-Shaped material and method for manufacture," dated 7th April, 2015.

Counsel for the appellant contended that the said impugned order was liable to be set aside for failing to consider the said invention as a whole by erroneously segregating the said invention and further failing to consider the multiple features of the said invention.

The High Court opined that the order dissected the subject invention into two isolated elements by characterizing the subject invention as having two main features. The Court referred paragraph 9.03.03.02 of the Indian Manual of Patent Office Practice and Procedure which provides, "the 'obviousness' must be strictly and objectively judged. While determining inventive step, it is important to look at the invention as a whole," and lays down five essential points that needed to be objectively judged to ascertain whether, looking at the invention as a whole, the invention does have inventive step or not.

The Court observed, "in determining inventive steps, the invention should be considered as a whole. In other words, it is not sufficient to draw the conclusion that a claimed invention is obvious merely because individual parts of the claim taken separately are known or might be found to be obvious. The contention that an invention is obvious in relation to a particular item must be treated with care and caution. In doing so, the whole picture presented should be taken into consideration and not a partial one. There should be an element of preciseness about what is asserted to be common general knowledge. The 'obviousness' must also be strictly and objectively judged."

The Court noted that the impugned order primarily relied on a document marked D4 which was the appellant's own patent and failed to consider the subject invention at hand which was an improvement thereon. The impugned order failed to apply the test of determination of inventive steps and consider the invention as a whole. The conclusion that the invention lacks inventive steps was also unreasoned.

In view of the aforesaid, the High Court found that the impugned order was unsustainable and set aside. The matter was remanded back to the said Adjudicating Authority to consider the application of the appellant afresh.