C.A.(COMM.IPD-PAT) 477/2022

Page 1 of 22

*

IN THE HIGH COURT OF DELHI AT NEW DELHI

Judgment Reserved on : 3^rdMay, 2023.

Judgment Delivered on : 2^ndJune, 2023.

+

C.A.(COMM.IPD-PAT) 477/2022

AGFA NV & ANR.

..... Appellants

Through:

Mr. Essenese Obhan, Ms. Aparna

Kareer and Ms.Ayesha Guhathakurta,

Advocates.

versus

THE ASSISTANT CONTROLLER OF PATENTS AND

DESIGNS & ANR.

..... Respondents

Through:

Mr. Harish Vaidyanathan Shankar,

CGSC with Mr. Srish Kumar Mishra,

Mr.

Sagar

Mehlawat

and

Mr.Alexander

Mathai

Paikaday,

Advocates.

CORAM:

HON'BLE MR. JUSTICE AMIT BANSAL

JUDGMENT

AMIT BANSAL, J.

1.

The present appeal under Section 117A of the Patents Act, 1970

(hereinafter ‘the Act’) has been preferred against the order dated 17^thJune,

2022 (hereinafter ‘impugned order’) of the Assistant Controller of Patents

and Designs, Indian Patent Office, Delhi (hereinafter ‘Controller’) refusing

the grant of patent in respect of patent application no.201617023479

(hereinafter ‘subject patent’) filed by the appellants.

Digitally Signed By:AMIT

BANSAL

Signing Date:02.06.2023 17:01:02

Signature Not Verified

C.A.(COMM.IPD-PAT) 477/2022

Page 2 of 22

BRIEF FACTS

2.

Brief facts necessary for deciding the present appeal are set out

below:

2.1

The appellants filed the national phase application no. 201617023479

in respect of the PCT Application no.PCT/EP/2015/052030 at the

Indian Patent Office titled ‘MANUFACTURING OF DECORATIVE

LAMINATES BY INKJET’ on 8^thJuly, 2016.

2.2

The Patent Office issued a First Examination Report (FER) dated 27^th

April, 2019 in terms of which, objections under Sections, 2(1)(j),

2(1)(ja) as well as Sections 10(4) and 10(5) of the Act were raised.

2.3

A detailed response along with an amended set of claims was filed on

behalf of the appellants to the aforesaid FER on 11^thJuly, 2019.

2.4

On 6^thMarch, 2022, the respondents issued a hearing notice fixing the

date of hearing for 21^stMarch, 2022, retaining the objections as

mentioned in the FER.

2.5

The appellants filed written submissions dealing with the issues that

were discussed during the oral hearing held on 21^stMarch, 2022 along

with an amended set of claims on 1^stApril, 2022.

2.6

The impugned order was passed by the Patent Office on 17^thJune,

2022 rejecting the subject application.

3.

Notice in the appeal was issued on 22^ndSeptember, 2022. Pursuant

thereto, written submissions have been filed on behalf of the respondents as

well as the appellants.

4.

The main grounds for refusal were the following:

Digitally Signed By:AMIT

BANSAL

Signing Date:02.06.2023 17:01:02

Signature Not Verified

C.A.(COMM.IPD-PAT) 477/2022

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(i)

The amended claims failed to meet the requirements under Sections

10(4)(c) and 10(5) of the Act as they were vague and the scope of

claims was indefinite

(ii)

The amended claims are not patentable in terms of Section 2(1)(ja) of

the Act.

Submissions

5.

While assailing the impugned order, counsel for the appellants made

the following submissions:

(i)

The impugned order records that steps 1 to 4 have been disclosed in

the prior art cited as D5. However, it does not make any mention of

step 5.

(ii)

The impugned order wrongly notes that the characterised feature 5b is

disclosed in D5. The prior art cited as D5 teaches “application weight

or wet weight” and not “total dry weight” as required by claim 1.

(iii)

The impugned order admits that feature 5a is not taught by prior art

document D5, but relies on ‘common general knowledge’ to refuse

claim 1. However, it does not provide any reference or basis to

establish ‘common general knowledge’. In this regard, reliance is

placed

on

the

judgment

of

Generics

(UK)

Ltd.

v.

Daiichi

Pharmaceuticals Co.Ltd., [2009] R.P.C. 4.

(iv)

Document D5 was also cited in opposition proceedings against the

appellants before the European Patent Office. However, the European

Patent was granted in favour of the appellants. The claims granted by

the European Patent Office are similar to the claims refused by the

impugned order.

Digitally