Jahanvi Agarwal
Delhi High Court in AGFA NV & Anr. V. The Assistant Controller of Patents and Designs & Anr., held today that there is an urgent need to update the manual of Patent Office Practice and Procedure as it does not provide any guidance on what constitutes succinctness or how to identify a lack of succinctness.
If the manual will be upgraded then it will help the Examiner and the Controller in intricate matters related to complex inventions and will provide better guidance and clarity to the examiner and the controller.
The two entities had filed an application under the Patents Act, of 1970 for a patent titled “Manufacturing of Decorative Laminates by Inkjet” but received a refusal from the Assistant Controller of Patents and Designs. In response to this refusal, they chose to challenge the Assistant Controller’s order.
When an application for a patent is rejected by the patent office, the applicant typically has the option to file an appeal or challenge the decision. In this case, it appears that the entities decided to challenge the refusal of the Assistant Controller of Patents and Designs.
Delhi High Court while hearing an appeal moved by two entities, granted relief and set aside the impugned order and stated that no specific observation was given by the Controller for the lack of succinctness in the patent claim. The court held that:
“It is often observed that patent applications in these domains either have a large number of Claims or involve a lot of features, which are interlinked to each other. 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”.
The court also added that the controller and the examiner should be given adequate technical and patent analytics training so that they can deal with complex matters involving Artificial Intelligence systems, machine learning functions, agrochemicals, pharmaceuticals, and manufacturing methods.
Name of the Case: AGFA NV & Anr. V. The Assistant Controller of Patents and Designs & Anr.
Diary Number: 477/2022.
Bench: Justice Amit Bansal