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.
