Avery Dennison Corporation v Controller of Patents and Designs (2022)

Summary

“The present is an appeal filed by the Appellant-Avery Dennison Corporation - seeking inter alia, an order to set aside the decision dated 12th August, 2021” by which the Controller “refused the application for grant of a patent titled ‘Notched Fastener’ bearing Application No. 5160/DELNP/2013” (para 1). The application “arose out of a PCT Application No. PCT/US2011/062189 filed on 28th November, 2011” (para 3), and “the subject patent application was refused on the ground of lack of inventive step relying on prior art documents D2 and D3.” (para 4) The Court framed the question as “whether the subject Patent Application lacks inventive step as defined in Section 2(1)(ja) of the Act in view of the disclosures made in the prior art documents.” (para 9)

The Court held that “None of the above approaches and tests are to be adopted in a straightjacketed manner.” (para 18) It identified D2, “an application filed by the same very Applicant on 2nd November, 1993” (para 25), as “the most relevant prior art” (para 24), and found that “the location, shape and the manner in which the notches are created as also the position at which the longitudinal detachment takes place when the fastening is done in the two fastener stocks is different.” (para 31) Holding that “simplicity in the invention should not deter the Court from granting a patent” (para 35), and noting “the lack of any other prior art document addressing the problems in the prior art and suggesting any solutions close to the invention despite the gap of more than 18 years” (para 39), it concluded that “the subject patent application satisfies the test of inventive step.” (para 39) “The patent shall, accordingly, proceed for grant. The appeal is allowed with no order as to costs.” (para 41)

What the court decided

1. The question on appeal. “The question that arises in this case is whether the subject Patent Application lacks inventive step as defined in Section 2(1)(ja) of the Act in view of the disclosures made in the prior art documents.” (para 9)
2. No single test of obviousness. “None of the above approaches and tests are to be adopted in a straightjacketed manner. Each patent application, depending on the field of” “technology and the nature of the prior arts may require different approaches or tests to be followed or applied.” “In the ultimate analysis, the examiner in the patent office or the Court adjudicating the issue would need to identify the elements in the prior art and compare the same with the claims in question from the point of view of a person skilled in the art” “If the same demonstrates a technical advancement over the prior art on the priority date of the application, then the patent would be liable to be granted.” (para 18)
3. Obviousness as a conjectural exercise. “Unlike the test of novelty or anticipation which is easier to determine by a straight comparison with the prior art, in the case of obviousness, the attempt of the Court is conjectural - making it a rather difficult exercise.” (para 18)
4. The closest prior art. “Upon identification of the inventive concept within the subject patent, as required for determining inventive step and lack of obviousness, a comparison with the identified prior arts is warranted.” (para 23) “A reading of D1 and D3 shows that they are broad patents relating to fastener guns which do disclose the fastener related elements. But, the most relevant prior art document which has been held against the Applicant, is D2” (paras 23–24)
5. The differences from D2. “In the case of the subject patent, there is proper alignment between the notch and the manner in which it is torn from the roll. However, in prior art, there is a possibility of the tearing resulting in irregular cutting. This disadvantage is sought to be overcome in the suit patent.” (para 29) “From a comparison between D2 and the subject patent it is clear that the location, shape and the manner in which the notches are created as also the position at which the longitudinal detachment takes place when the fastening is done in the two fastener stocks is different.” (paras 29, 31)
6. Simplicity and hindsight. “That simplicity does not defeat an invention - even simple inventions are patentable.” “The inventive step has to be assessed on the basis of the date of priority of the subject patent and not after the publication of the same i.e., it is not permissible to do a hindsight analysis or an ex-post facto analysis.” (para 32) “It is thus clear that simplicity in the invention should not deter the Court from granting a patent.” (paras 32, 35)
7. The age of the prior art. “One of the sure tests in analysing the existence of inventive step would also be the time gap between the prior art document and the invention under consideration. If a long time has passed since the prior art was published and a simple change resulted in unpredictable advantages which no one had thought of for a long time, the Court would tilt in favour of holding that the invention is not obvious.” (para 36)
8. The gap of eighteen years. “The prior art document D2 belongs to this very Applicant, and the subject patent application was filed almost 18 years after the filing of D2.” “No other prior art has been cited between the period 1992 till 2010 which has dealt with fasteners in this manner and has even come close to suggesting changes in the prior art fastener stock. If the invention was so obvious, fasteners and fastener stock being products used in bulk in industries, any third party could have made the changes in the prior art to arrive at the subject invention - which obviously has not happened.” (para 38)
9. Inventive step over D2. “The improvement in the present case between the prior art and the subject invention is clearly decipherable. The same does not lack inventive” “step.” “The closest prior art identified is D2 and the subject application discloses a technical advancement in comparison with the closest prior art and the features comprising inventive step are not obvious to a person skilled in the art and therefore, the subject patent application satisfies the test of inventive step.” (para 39)
10. Differences called superficial. “Applying any of the judicially recognised tests or the settled approach towards such cases, as discussed above, the Controller’s finding that any person skilled in the art could make the variation and modifications in D2 to arrive at the subject invention, is not tenable. The differences which the Controller describes as ‘superficial’ may appear simple but clearly have an impact on the product concerned.” (para 40)
11. Foreign grants and evergreening. “This Court also notes the fact that the corresponding patent applications in various jurisdictions have already been granted in the USA, Japan, South Korea and China. The issue of evergreening raised in the submissions would not arise in these facts.” (para 40)
12. Disposition. “The patent shall, accordingly, proceed for grant. The appeal is allowed with no order as to costs.” (para 41) “List before the Patent office for completion of requisite formalities, if any, on 14th November 2022.” (paras 41–42)

Subsequent treatment

• Followed — In Societe Des Produits Nestle v Controller of Patents and Design (2023) the Delhi High Court held that “In terms of the decision of a Coordinate Bench of this Court in Avery Dennison Corporation v. Controller of Patents and Designs, 202/DHC/004697, the age of the prior art cited is a relevant consideration for determining if the subject matter of the Patent Application would be obvious to a person skilled in the art or not.” (para 63)
• Followed — In Decco Worldwide Post Harvest Holdings B.V. v Controller of Patents and Designs (2023) the Calcutta High Court held that “The tests for deciding inventive steps have been elaborately dealt in Avery Dennison Corporation vs. Controller of Patents and Designs” “and the Controller has ignored the same in deciding the question of inventiveness.” (para 14)
• Followed — In Phillip Morris Products v Assistant Controller of Patents and Designs (2026) the Delhi High Court held that “In Societe Des (Supra), as also the earlier decision in Avery Dennison (Supra), this Court has held that age of the prior art cited is a relevant consideration for determining if the subject matter of the patent application would be obvious to the person skilled in the art or not.” (para 42)