Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement
Expert AnalysisLocal Insights

Delhi High Court sets aside ‘incomprehensible’ patent controller order in Art Screw decision

Sponsored by

book-149494 resized.png

Ranjan Narula and Suvarna Pandey of RNA Technology and IP Attorneys analyse the fiery ruling which declared ‘an order which contains reasons that no one can understand is worse than an unreasoned order’

In December 2022, an appeal was lodged against an order of the Controller of Patents refusing a patent application entitled “Fastener and Fastening Structure.” The patent was refused under Section 2(1)(ja) of the Patents Act, 1970, on the ground that it lacks an inventive step. The applicant filed an appeal against the order at the Delhi High Court, in Art Screw Co. v. The Assistant Controller of Patents and Designs.

Background: The objective of the invention

The invention solved a technical problem by providing an improved fastener with a significant loosening prevention effect. It also improved fatigue strength by equalising the load imposed on all the screw threads of the fastening member, to prevent stress concentration and initial loosening.

Essential features of the invention

The pressure flank surface formed in the upper portion provided on the side of the thread crest is on the side of the seat surface. Therefore, when the fastening member is fastened to a corresponding fastening member, the pressure flank surface is pressed by the corresponding fastening member. 

The side surface of the lower portion of the screw thread on the fastening member is located inward of the corresponding flank surface and dented inward. Thus, the lower portion of the screw thread is elastically deformed by the above pressing, which generates a reaction force. Accordingly, the friction force between the pressure flank surface of the fastening member and the corresponding fastening member is increased, which creates a significant loosening prevention effect.

Grounds of appeal

Art Screw, in its appeal against the order, raised the following grounds:

  • The prior art documents mentioned in the examination report were also cited in corresponding patent applications in the US, EPO, CNIPA and PCT;

  • The patent has been granted in Japan (its home country), the US, EPO, China and Korea, and the prior art documents referred to during the examination in India were also cited in the reports of the corresponding patent applications; 

  • The applicant has sufficiently demonstrated the structural and technical differences between the fastener (for which patent protection is sought) and those disclosed in the cited documents; and

  • The reasons for refusal were incomprehensible and a mere reproduction of the cited patents' specifications.

Court decision

The Court, after hearing the parties, set aside the order of the Controller, noting that: 

  • The refusal order is entirely incomprehensible;

  • An order which contains reasons that no one can understand is worse than an unreasoned order;

  • From the impugned order, the basis for holding that the invention lacks an inventive step is impossible to comprehend;

  • A finding that an invention lacks an inventive step is a serious one. It seriously compromises inventive integrity of the applicant-inventor. The assessment of whether any inventive steps were involved must be examined after considering a variety of factors involving several authoritative proclamations, including from the Supreme Court; and

  • The Court was unsatisfied that the impugned order reflects a proper application of thought to the issue or is supported by comprehensible reasons.

The Court thus directed the patent office to hear the matter anew and take a decision as expeditiously as possible and, in any event, within a period of three months. Further, the Court ordered that the patent application be allotted to a different officer from the one who passed the impugned order.

Final comment

With the abolition of the Intellectual Property Appellate Board, the appellate powers are now transferred to the Delhi High Court’s IP division. Thus, the Orders of the Controller of Patents in an appeal are being scrutinised by the Court on technical and judicial parameters to test their patentability standards as per the Indian Patent Act. This has resulted in the speedy disposal of cases.

The applicant was represented before the court and patent office by RNA Technology and IP Attorneys with a team of Ranjan Narula and Suvarna Pandey. 

more from across site and ros bottom lb

More from across our site

Civil society and industry representatives met in Geneva on Thursday, September 28 to discuss a potential expansion of the TRIPS waiver
Sources say the beta version of the USPTO’s new trademark search tool is a big improvement over the current system but that it isn’t perfect
Canadian counsel weigh in on the IP office’s decision to raise trademark filing fees in 2024 and how they’re preparing clients
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Shira Perlmutter, US Register of Copyrights, discussed the Copyright Office's role in forming generative AI policy during a House of Representatives hearing
The award marks one of the highest-ever damages received by a foreign company in a trademark infringement suit in China
Two orders denying public access to documents have reignited a debate over a lack of transparency at the new court
Rouse’s new chief of operations and the firm’s CEO tell Managing IP why they think private equity backing will help it conquer Europe
Brian Landry, partner at Saul Ewing, reveals how applicants can prosecute patent applications in the wake of the Federal Circuit's In re Cellect ruling
Ronelle Geldenhuys of Australia’s Foundry IP considers the implications complex computer technologies such as AI have on decision-making