JUDGMENT

Prathiba M. Singh, J.

1. This hearing has been done through hybrid mode.

Brief Facts

2. The present appeal was originally filed in the year 2020 before the Intellectual Property Appellate Board (‘IPAB’). Vide order dated 5th March, 2020, notice was issued in the appeal by the IPAB. Thereafter, following the promulgation of the Tribunal Reforms (Regulation and Conditions of Service) Ordinance, 2021, and the subsequent abolition of the IPAB, the appeal was transferred to this Court. Further, vide order dated 3rd June, 2022, the ld. Joint Registrar has also issued Court notice to the Respondent in the present appeal.

3. The present is an appeal filed by the Appellant- Microsoft Technology Licensing, LLC seeking inter alia, an order to set aside the impugned order dated 23rd May, 2019 passed by the Respondent- Assistant Controller of Patents and Designs (hereinafter ‘Controller’). The impugned order refused the application for grant of a patent titled ‘Reversible 2- Dimensional Pre- /Post-Filtering for Lapped Biorthogonal Transform’ bearing Application No. 3304/DEL/2005, filed on 8th December, 2005 (hereinafter ‘subject patent’), under Section 15 of the Patents Act, 1970 (hereinafter ‘the Act’). The subject patent application was filed as a Convention Application, taking priority from a US patent application bearing Application No. US 11/035991 dated 14th January, 2005. The Bibliographic details of the subject patent application are set out below:

11A)

REPLY TO FER DATE 01/06/2015

4. By the impugned order, the ld. Controller has refused the application for grant of the subject patent on the ground that the Claims of the said patent fall within the scope of Section 3(k) of the Act and are consequently not allowable under the Act. However, in the impugned order, the learned Controller has waived the objection on lack of inventive step, on the basis of three prior art documents, which was raised in the First Examination Report (‘FER’) and Hearing Notice, issued by the ld. Controller. The details of the prior arts which were relied upon by the ld. Controller, in support of the objection of lack of inventive step are set out below:

5. Aggrieved by the impugned order, the Appellant has preferred the present appeal.

Submissions of the Appellant

6. Ms. Vindhya S. Mani, ld. Counsel has made submissions on behalf of the Appellant and relied on written submissions dated 9th February, 2023 as also a presentation, which was handed over to the Court on 13th July, 2023. In the written submissions, the Appellant has given an overview of the subject patent application and highlighted the problem being solved by the subject patent application. In the invention, the Appellant claims to have addressed the technical problem of inefficiency in encoding blocks of 2D digital media data by introducing a novel and inventive application of a one- dimensional lapped overlap operator. According to the Appellant, the approach specified in the subject patent application improves the encoding process by partitioning the 2D digital m