A SIMPLE INNOVATION IS ALSO PATENTABLE By - Amresh Swarnkar
A SIMPLE INNOVATION IS ALSO PATENTABLE
Authored By
- Amresh Swarnkar
INTRODUCTION
This blog
talks about the the judgement of Avery Dennison Corporation v. Controller of
Patents and Designs.
In this
judgement an appeal has been filed by Avery Dennison Corporation to set aside
the impugned order of The Controller of Patents and Designs in order to get
their patent passed in the High Court of Delhi.
In this
judgement the judge after hearing both the side allowed the appeal and granted
the order to pass the patent and relied on two tests, which are-
1.
Simplicity does not defeat an invention i.e. even
simple inventions are patentable.
2.
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.
PARTIES:
Avery Dennison
Corporation (Appellant) v. Controller
of Patents and Designs (Respondent)
FACTS OF THE CASE:
Herein the appellant i.e. Avery
Dennison Corporation is engaged in the business of providing- branding,
information labelling solution and enhance brand packaging, to carry or display
information about products.
The present appeal is filed by the Avery Dennison
Corporation (Appellant) to set aside the inter
alia order dated 12th August 2021 of the Controller of Patents
and Designs (Controller) in which the
Controller refused the applicants for the grant of a patent titled
'Notched Fastener'. To this Avery Dennison Corporation have approached the High Court under
Section 117A (2) of the Act to side aside the order dated 12th August 2021. The Controller of Patents and
Designs had denied granting the patent
on the ground that the proposed invention does not constitute as an invention
under Section 2(1) (j) of the Patent Act, 1970.
Avery
Dennison Corporation v. Controller of Patents and Designs (Delhi High Court on
25th July, 2022 by Justice Pratibha M. Singh)
JUDGEMENT BY THE COURT:
In this
judgement firstly the various tests related to inventive steps have been
mentioned and the various judgements pertaining to these tests have also been
cited although all these tests are not applicable in an overall manner in a
given case whereas any one of them or even a combination of them is applied in
cases based on the facts involved in such cases.
In this
present case Hon’ble judge has relied on basically two principles in
assessing inventive step and the obviousness of an invention:
1.
Simplicity does not defeat an invention i.e. even
simple inventions are patentable.
2.
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 – which means that an invention should not be thought to be a
normal invention seeing it in today’s time i.e. after it has been invented
whereas it should be thought from the perspective of when that particular
invention was made, then only the difficulty or the real effort behind the
innovation involved will be able to be assessed.
3.
For example- seeing a
mobile phone in today’s time will seem easy to build it but when it was built
initially for the first time then only the difficulty or efforts behind
building it can be thought of.
To
substantiate the point that a simple invention is also patentable the judge
relied on the cases of-
"If
the apparatus be valuable by reason of its simplicity, there is a danger of
being misled by that very simplicity into the belief that no invention was
needed to produce it. But experience has shown that not a few inventions, some
of which have revolutionised the industries of this country, have been of so
simple a character that when once they were made known it was difficult to
understand how the idea had been so long in presenting itself, or not to
believe that they must have been obvious to everyone."
2. Privy
Council decision- Pope Appliance Corp. v. Spanish River
Pulp & Paper Mills Ltd[2]
"The
principal objection seems to be that the invention is too simple, but that is
not an objection that a practical paper-maker would take. It ought to be looked
upon as a bold conception. Although air has been used, it has not been applied
in the particular way in which it was applied by Pope. The man who correlated
the elements of a forty-year old problem is entitled to a patent."
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.
Terrel on
Law of Patents (16th Edition) opines that the age of the prior art and why it
was not done before is one of the factors to be considered while deciding on
obviousness. The observations made in the judgement Brugger v. Medic-Aid
Ltd[3] delivered
by the UK Patents Court has been cited to substantiate to consider this factor:
“The fact
that a piece of prior art has been available for a long time may indicate,
contrary to first impressions, that it was not obvious to make the patented
development from it. It is useful to bear in mind in this regard the concept of
long felt want. This is a particularly efficient expression. An apparently
minor development which meets a long felt want may be shown to be non-obvious
because, although the prior art has long been available, the development was
not hit upon by others notwithstanding that there was a need for improvement
(the 'want') and an appreciation of that need (the 'felt'). In other words the
age of prior art may be an indication that a development from it is not obvious
if it can be shown that the circumstances in the relevant trade were such that
a failure of the development to appear earlier is surprising.”
In the
present case the judge found after comparing the prior art and the present
innovation a clear advantage in the present innovation. The improvement in the
prior art and the present innovation is clearly decipherable was declared by
the judge.
The subject
application in the present case 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.
The court
on the basis of the aforementioned reasons set aside the Controller’s order by
stating that the Controller’s finding that any person skilled in the art could
make the variation and modifications in D2 (prior art) 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. The description of the said differences as superficial would,
therefore, be misplaced.
Hence, the
appeal was allowed and the patent was held to be granted.
CONCLUSION
After going
through the present blog the readers will be able to understand the judgement
of Avery Dennison Corporation v. Controller of Patents and Designs and will
also come to know that a simple innovation is also patentable i.e. even
if a an innovation is a simple one it can be patented.
The judge
in the present case relied upon the two tests to grant patent to Avery Dennison
Corporation thereby setting aside the impugned order of the Controller of
Patents and Designs and these two tests have also been discussed in the present
blog, these tests are-
1.
Simplicity does not defeat an invention i.e. even
simple inventions are patentable.
2.
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.
So overall
we can say that the present judgement will help a lot of inventors because by
the precedent set by this judgement a simple innovation will also
be patentable and the various innovators in an industry will be
able to take help of this judgement in getting a patent for their innovations.