Agfa NV v Assistant Controller of Patents and Designs (2023)

Summary

“The present appeal under Section 117A of the Patents Act, 1970 (hereinafter ’the Act’) has been preferred against the order dated 17th June, 2022 (hereinafter ‘impugned order’) of the Assistant Controller of Patents and Designs, Indian Patent Office, Delhi (hereinafter ‘Controller’) refusing the grant of patent in respect of patent application no.201617023479 (hereinafter ‘subject patent’) filed by the appellants.” (para 1) The application, titled “‘MANUFACTURING OF DECORATIVE LAMINATES BY INKJET’” (para 2.1), drew “a First Examination Report (FER) dated 27th April, 2019 in terms of which, objections under Sections, 2(1)(j), 2(1)(ja) as well as Sections 10(4) and 10(5) of the Act were raised.” (para 2.2) “The main grounds for refusal were the following:” “The amended claims failed to meet the requirements under Sections 10(4)(c) and 10(5) of the Act as they were vague and the scope of claims was indefinite” and “The amended claims are not patentable in terms of Section 2(1)(ja) of the Act.” (para 4)

The Court held: “Therefore, I do not find merit in the objection on lack of clarity or that the Claims are indefinite.” (para 21) Of succinctness, “the present set of Claims, in my opinion, cannot be said to lack succinctness.” (para 24) On inventive step, “it cannot be said that D5 relates to ’total dry weight’, which is specifically required under the Independent Claim 1 of the subject patent application” (para 29), and “the Controller has failed to give any source of the common knowledge that has been considered.” (para 37) “In view of the discussions above, the impugned order dated 17th June, 2022 is set aside and the Patent Office shall proceed to grant the patent, subject to completion of necessary formalities.” (para 44)

What the court decided

1. Clarity of the claim terms. “The terms of the patent claims (’thermosetting resin’, ‘an ink acceptance layer’, ‘inorganic pigment’, ‘polymeric binder’) that have been held to be vague, have been sufficiently described in the description of the complete specification. Further, even preferred embodiments for the said terms or expressions are given. Therefore, it is clear that the aforesaid expressions/terms have been adequately explained. It is also observed that the impugned order fails to take into account that the patents specification is addressed to a person skilled in the art to whom the aforesaid terms of Claims would be quite clear in any case.” “Therefore, I do not find merit in the objection on lack of clarity or that the Claims are indefinite.” (paras 20–21)
2. Succinctness. “There is no specific reasoning given for the lack of succinctness in the Claims. I observe that even the Manual of Patent Office Practice and Procedure, dated 26th November, 2019, issued by the Office of the Controller General of Patents, Designs and Trademarks does not give any guidance on what constitutes succinctness or how to identify lack of succinctness.” (para 22) Turning to the Australian Manual, under which lack of succinctness arises where “an individual claim is considered unnecessarily lengthy; or” “the statement of claims as a whole is considered unnecessarily lengthy due to the repetitious nature of the claims” (para 23), the Court held: “In the present case, the first Claim is lengthy but by no means unnecessarily lengthy as it is defining specific features and expressions that are interlinked to each other. Considering that it is the right of the patentee to draft Claims so as to protect all the aspects and features of the invention sought to be protected, the present set of Claims, in my opinion, cannot be said to lack succinctness.” (paras 22–24)
3. Application weight and total dry weight. “However, counsel for the appellant correctly points out that D5 relates to ‘application weight’ and not ’total dry weight’ as required by the Independent Claim 1.” (para 27) Reading paragraphs of D5 “that states that ‘application weight’ includes moisture content” (para 28), the Court held: “Therefore, upon perusal of the above extracts, it cannot be said that D5 relates to ’total dry weight’, which is specifically required under the Independent Claim 1 of the subject patent application.” (paras 27–29)
4. Common general knowledge. “While rejecting the aforesaid feature of the Claim on the ground of ‘common general knowledge’, the impugned order does not provide any reference of the ‘common general knowledge’ or the fact as to why the persons skilled in art would apply such ‘common general knowledge’ to the aforesaid feature.” (para 31) “From the above extract, for the Controller to rely on ‘common general knowledge’ as a ground for refusing a patent application, it is essential to specify the source of the said knowledge. It would be essential that the said source of the ‘common general knowledge’ would have been published before the priority date of the patent application. In addition, the fact that a theory or principal or knowledge has become common knowledge needs to be substantiated by some evidence. The said evidence could be in the form of references to the ‘common general knowledge’ textbooks or research articles or standard documents.” (para 34) “In the present case, however, the Controller has failed to give any source of the common knowledge that has been considered. Therefore, it cannot be construed as to what precise element of ‘common general knowledge’ has been considered along with the cited prior art to claim that the combination of the teachings of the prior art and the ‘common general knowledge’ led to a finding of lack of inventive step.” (paras 31, 34, 37)
5. An essential technical feature. “There is nothing to show that the characteristic feature 5a would vary as per the customer’s requirement. 5a is an essential technical feature of Claim 1.” “The appellant has provided sufficient data as well as examples in Table 8 of the complete specification that demonstrates that the features claimed in Claim 1 produce the desired result.” (para 32)
6. The unreasoned refusal of claim 11. “The impugned order fails to give any reasoning with regard to novelty or the inventive feature of the aforesaid Claims and merely concludes that the ’technical features of the product claimed in claim 11 to 13 are explicitly disclosed in D5’. D5 does not make any teaching that the ink receiving layer is free of thermosetting resin.” (para 42)
7. Corresponding foreign proceedings. “It may be relevant to note that document D5 was also cited before the European Patent Office in the opposition proceedings against the appellants in the corresponding European application. Yet, the claims were found novel and innovative over document D5, other prior art documents and other documents.” (para 38) “This Court also notes that corresponding patent application has been granted in various jurisdiction” “which includes USA, UK, Australia, China and various countries in Europe.” (paras 38, 43)
8. Disposition. “In view of the discussions above, the impugned order dated 17th June, 2022 is set aside and the Patent Office shall proceed to grant the patent, subject to completion of necessary formalities.” “List before the Patent Office on 14th June, 2023 for completion of necessary formalities.” (paras 44–45)
9. Obiter. Updating the Manual. “As the number of Patent filings in India are rapidly increasing and there is an imminent need to update the Manual of Patent Office Practice and Procedure so that Examiners and Controllers can get better guidance on dealing intricate matters like objections of lack of clarity and succinctness.” “Therefore, I would recommend to the Office of the Controller General of Patents, Designs and Trademarks to update or revise the Manual for Practice. This would ensure that Examiners and Controllers can be better equipped to ascertain aspects like clarity and succinctness of inventions.” (para 47)

Subsequent treatment

• Followed — In Deepak Nitrite v Assistant Controller General of Patents and Designs (2026) the Bombay High Court held it “wholly impermissible” to invoke common general knowledge without its sources, a position “well-settled by the Delhi High Court in AGFA NV v. Assistant Controller of Patents and Designs, wherein the Delhi High Court, inter alia, held that the Controller is required to identify the source of the asserted common general knowledge and to demonstrate that such source was published prior to the priority date of the application” (para 10).