Avery Dennison Corporation Vs Controller of Patents And Designs (Delhi High Court)
A simple change resulting in unpredictable advantages of a product would come under the ambit of ‘invention’ under Patents Act
Conclusion: Delhi High Court on the issue of invention under Patents Act, 1970 observed that 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.
Facts: In present facts, the appeal has been filed by the Appellant seeking inter alia, an order to set aside the decision dated 12th August, 2021 of the Respondent-Controller General of Patents and Designs. The impugned order refused the application for grant of a patent titled ‘Notched Fastener’ under Section 15 of the Patents Act, 1970 on the ground that the claimed subject matter of the subject patent does not constitute an invention under Section 2(1)(j) of the Act.
The Appellant company is engaged in the business of providing branding and information labelling solutions and manufactures a wide variety of labelling materials to enhance brand packaging, to carry or display information about products.
The Hon’ble High Court observed that 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. For determining inventive step or lack thereof, various approaches and tests have emerged over the years from decisions of courts/authorities as also from examination guidelines of patent offices from different jurisdictions. The same include i. Obvious to try approach ii. Problem/solution approach iii. Could-Would Approach and iv. Teaching Suggestion Motivation (TSM test)
The said approaches are used to determine inventive step in various jurisdictions, including the UK, EPO, USA etc. These approaches have also been applied, even with modifications, in order to suit the facts and circumstances of each case by Courts. Some of these approaches to determine lack of obviousness also find a mention in the Guidelines for Examination published by the European Patent Office.
It was observed that these approaches seek to formulate the manner in which prior arts are to be analysed and a patent application is to be tested on the anvil of inventive step. 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 some situations, the Court may even adopt an approach of combining more than one test. 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. 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.
Coming to the facts of the present case, the overall system being claimed in the subject patent identifies the purpose of the invention as under:
