LI Network
Published on: November 29, 2023 at 12:13 IST
The Madras High Court has issued a directive to the Controller of Patents and Designs to reevaluate the patent application submitted by Saint-Gobain for their invention titled ‘NONWOVEN ARTICLE.’
The action ensued after Saint-Gobain filed a Civil Miscellaneous Appeal (Patents) under Section 117-A of the Patents Act, 1970, challenging the rejection of their patent application by the Controller.
Justice Senthilkumar Ramamoorthy, presiding over a Single Bench, termed the prior rejection order as a “completely unreasoned order” and mandated a fresh consideration of the application. The court specified certain conditions for the reevaluation process, emphasizing the involvement of an officer distinct from the one responsible for the initial rejection.
Additionally, the court instructed that a reasoned decision must be reached within a timeframe of six months, ensuring a fair and transparent reconsideration.
Case Background:
The case originated from the submission of a patent application by Saint-Gobain, which subsequently faced objections raised by the Controller on various grounds, including lack of novelty, inventive step, unity of invention, sufficiency of disclosure, and lack of clarity and definitiveness.
The foreign nationals, acting as the appellants, responded by submitting amended claims and engaging in hearings. Despite these efforts, the application was ultimately rejected.
The court scrutinized the grounds for rejection, noting that the impugned order primarily focused on alleged insufficiency of disclosure.
The court observed that the reasons cited for refusing the application did not adequately reference relevant paragraphs in the complete specification provided by the appellants.
Addressing the objections related to lack of definitiveness, the court highlighted that certain aspects, such as the specified range and the expression “greater,” were not sufficiently considered in the rejection order. The court emphasized that the Controller could have requested the patent applicant to amend the claims and the complete specification to address any concerns.
Moreover, the court criticized the lack of reasoned analysis regarding the objection on the inventive step, noting that the conclusion was drawn without proper reference to prior art.
In conclusion, the High Court set aside the impugned order, underscoring the need for a thorough and reasoned reconsideration of Saint-Gobain’s patent application.
Case Title: Saint-Gobain Abrasives, Inc. & Anr. v. The Controller of Patents and Designs (Neutral Citation: 2023:MHC:5186)