Indian Patent Office’s pre-grant opposition rejection proves promising for patent jurisprudence

In March, the Indian Patent Office (IPO) rejected a pre-grant opposition and granted a patent in favour of the applicant, Lenzing AG, for an invention relating to high-tenacity cellulosic regenerated fibre. The decision exemplifies the recent trend of improvements in Indian patent jurisprudence.

Background

Indian textile conglomerate Grasim Industries filed a pre-grant opposition against Lenzing on the grounds of prior publication, prior use, obviousness and insufficiency, provided under Section 25(1) of the Patents Act.

Grasim relied on nine prior art documents, an excerpt from the International Bureau for the Standardisation of Man-made Fibres regulations and an attested copy of a Grasim invoice to establish its case.

Lenzing filed detailed submissions rejecting Grasim’s allegations. It contended that the invention relates to a high-tenacity cellulosic regenerated fibre having a defined individual titre value range and reveals a tenacity in its conditioned state and a wet modulus at a defined elongation, which is novel to said titre value range.

Subsequently, a pre-grant hearing was appointed, and the IPO passed a detailed decision upholding the novelty and inventiveness of the application and rejected the grounds of prior use and insufficiency of disclosure.

The IPO’s decision

The IPO opined that none of the cited documents disclosed each element of the claimed invention. In its reasoning, it relied on Hoechst AG v Unichem Laboratories AIR 1969 Bom 255 – a landmark judgment on prior publication – in which it was held that “to anticipate a patent, a prior publication or activity must contain the whole of the invention impugned, i.e., all the features by which the particular claim is attacked”. Reference was also made to page 28 of Elizabeth Verkey’s Law of Patents, which states that “to be an anticipating reference, an item must disclose each and every element of the claimed invention”. The IPO held that Grasim had failed to establish the ground of prior publication under Section 25(1)(b) of the Patents Act.

With regard to obviousness, Grasim conceded that the cited prior arts did not disclose the claimed tenacity in a conditioned state and a wet modulus at a defined elongation of the claimed microfibre. However, it argued that without evidence to the contrary, it is reasonable to deduce that the claimed tenacity and wet modulus are inherent to the fibres disclosed in the prior art.  

Further, since the manufacturing step of the microfibre is known, it was therefore obvious. The IPO held that:

…when the applicant’s invention is claiming a finer fibre it cannot be said that the applicant’s invention is obvious and lacking in inventive steps, just because the manufacturing steps in the process are known, without sufficient proof on fibre fineness and properties. Simply stating that steps in the process involved to produce the fibre are well known in the art is not sufficient. The instant application does not claim a process rather it claims a product. Further, the tenacity values of the instant application also show an improvement over cited prior art.

To determine whether the claimed invention led to a technical improvement, the IPO relied on F Hoffman la Roche v Cipla from 2012, in which the Delhi High Court laid down five notable points that are useful for objectively ascertaining whether, when looking at it as a whole, the invention does have an inventive step. It concluded that the definition of ‘technical improvement’ may be summarised in three points:

• a change that improves the quality or condition of a person or object;
• an occasion when something gets better or when you make it better; and
• the act of improving something increases the value of the property.

In the IPO’s opinion, the invention in question satisfied all three of these conditions, demonstrating that it involved an inventive step.

With respect to the ground of prior use, the IPO held that the invoice, which was submitted as evidence, did not disclose any technical specifications. Instead, it was commercial in nature and illegible, so prior use was doubtful. It referred to page 208 of P Narayan’s Patent Law (4th edition):

Prior use [is] doubtful, where the opponent’s case on prior use did not more than raise a small doubt as to whether a valid patent could issue, [and] the proper course might be to allow the application to proceed to grant [Gallay Ltd.’s Appln (1959) RPC141].

The IPO rejected ‘insufficiency of disclosure’, opining that:

…[the] applicant has explained the invention in accordance with the provisions of Patents Act and Rules. The essential part of the invention is clearly and unambiguously disclosed in the present specification and a person skilled in the art can implement the claimed inventions based on the disclosures of the present application in combination with ordinary knowledge in the art.

Thus, Grasim’s opposition was rejected, and the IPO granted the patent. This decision is a notable example of the office issuing a well-reasoned order and follows the recent trend of improvements in Indian patent jurisprudence.