Obtaining a patent is a rigorous process, and any missteps – whether procedural or substantive, can lead to loss of patent rights. In a recent case, the Delhi High Court reinforced this reality by dismissing an appeal against the rejection of a patent application that claimed an unusual invention. The court not only found the claims lacking in novelty and technical merit but also refused to condone an extraordinary 701-day delay in filing the appeal.
Background
The appellants – Abhishek Sharma and Pushpa Sharma filed a patent application bearing no. 202111053480, titled “INNOVATIVE CHANGE TO SOLVE ANY DISPUTE, UNEXPECTED BUSINESS LOSS, CLOSURES, FINANCIAL LOSS, UNEXPECTED ACCIDENTS.” with the Indian Patent Office in 2021. The application contained three claims, each quite more interesting than the other, and are provided below.
“We claim:
1. A wearing’s comprising:
a. a cloth or any cloth;
b. a band;
c. a foot wear;
d. an accessory;
e. an asset; or
f. any coating.
wherein the color of the article is black.
2. The black coloured wearing’s as claimed in claim 1, wherein the wearing’s have affects on the human brain.
3. The black coloured wearing’s as claimed in claim 1, wherein the wearing’s transfer the negative energy from the self to others or else to an outside environment.”
Rejection by IPO
The patent office examined the application and rejected the same reasoning that the claimed invention lacked novelty and inventiveness under Section 2(1)(j) of the Patents Act. The controller asserted that the claims were primarily concerned with the aesthetic property of black color rather than any technical innovation. The controller also noted that the application relied on abstract theories and unsubstantiated assertions without scientific evidence. The claims failed to meet the requirements of Section 10 of the Patents Act, as they did not define any technical structural or functional features. Further, the controller held that the invention fell within the exclusions under Section 3(a) and (c), as it constituted an abstract theory without technical applicability. The Appellants responded to the First Examination Report with a 12-page handwritten response asserting the patentability of the invention. The controller finally refused the application on 10th November 2022 after a hearing maintaining that the invention was not patentable.
Aggrieved by this decision of the controller, the appellants filed an appeal before the Delhi High Court along with an application for condonation of delay by 701 days.
Delhi High Court’s observation on condonation of delay
The Delhi High Court first took up the matter of the extraordinary delay in filing the appeal. The appellants argued that the delay was caused by their continuous follow-ups with the patent office, which, according to them, had informally indicated that re-examination of the refused application might be possible. However, the court found that the first record of communication on the patent office’s Open House Helpdesk portal was from August 21, 2024, well beyond the statutory limitation period for filing an appeal. The court held that such communications could not justify the extraordinary delay.
Court’s findings on patentability
On the aspect of patentability, the appellants contended that a patent for the same invention had been granted in Germany. The court, however, noted that though the appellants claimed that a patent for the same invention was granted in a foreign jurisdiction, they failed to provide any supporting details or documents bringing into doubt the veracity of these claims. The court further noted that the controller’s finding that the application was merely an abstract theory without scientific or technical basis and did not qualify as an invention under the Patents Act was indeed correct and irrefutable.
Conclusion
Concluding that the impugned order was well-reasoned and required no interference, the court dismissed the appeal both on the grounds of delay and lack of merit. The judgment reinforces the importance of adhering to statutory deadlines even when the law allows for some delays in certain instances. The judgment also clarifies the well-established principle that abstract ideas are not patentable.
Citation: Mr. Abhishek Sharma & Anr. v. Assistant Controller of Patents & Designs, C.A.(COMM.IPD-PAT) 4/2025 (H.C. Delhi Feb. 13, 2025). Available on: https://indiankanoon.org/doc/17928266/
Authored by Gaurav Mishra, BananaIP Counsels
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
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