Novelty and inventive step are the essential requirements for the grant of a patent . In an interesting development, the High Court of Delhi, in Avery Dennison Corporation v. Controller of Patents and Designs, CA. 29/2021, has reiterated that the simplicity of an invention should not deter the grant of a patent.
An appeal was filed by the Appellant (i.e., Avery Dennison Corporation) seeking inter alia, an order to set aside the decision of the Respondent (i.e., the Controller General of Patents and Designs). The Respondent had refused an application for a patent titled ‘Notched Fastener’ under Application No. 5160/DELNP/2013, on the ground of lack of inventive step whilst relying on two prior art documents.
The Appellant argued that the inventive step lies in the features i.e., creation of the notch, position of the notch, shape of the notch, and the direction of the notch in relation to cross-pieces. Further, the technical advantage has been identified to lie in overcoming the variation in the length of the fastener being cut due to elasticity.
The Respondent submitted that the purpose and effect of the notch can be construed by a reading of one the cited prior art. A mere change in the shape or position of the notch would be obvious to a person skilled in the art. Moreover, the subject patent is an attempt aimed at evergreening of the patent, since the prior art is also of the Appellant.
Decision of the High Court of Delhi:
The Court considered the approaches adopted in various jurisdictions, to determine the inventive step of an invention viz. the ‘obvious to try’ approach, the ‘problem/solution’ approach, the ‘could-would’ approach, and the ‘teaching- suggestion-motivation’ approach.
The Court observed that: simplicity does not defeat an invention- even simple inventions are patentable; and that inventive step has to be assessed on the basis of the date of priority of the subject patent application and not after the publication of the same i.e., it is not permissible to do a hindsight analysis. In this case, the distinction between the prior art and the subject patent application primarily resided in the shape, position, and engagement with the notch, and the way the detachment takes place when the fastening happens. Moreover, the closest prior art document belonged to the Appellant, and the subject patent application was filed almost 18 years after the filing of the said prior art application. No other prior art was cited for the period between1992 and 2010. 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. The Court held that the Controller’s finding that any person skilled in the art could make the variation and modifications to the cited prior art to arrive at the subject invention, is not tenable. Accordingly, the Court ordered that the patent shall proceed for grant.