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IN THE HIGH COURT OF DELHI AT NEW DELHI

Date of Decision: 31^st March, 2022

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C.A. (COMM.IPD-PAT) 4/2022

AGRIBOARD INTERNATIONAL LLC

..... Plaintiff

Through:

Mr. Vineet Rohilla, Mr. Rohit Rangi

and

Mr.

Debashish

Banerjee,

Advocates. (M:9810540598)

versus

DEPUTY CONTROLLER OF PATENTS AND

DESIGNS

..... Defendant

Through:

Mr. Harish V. Shankar, CGSC, Ms. S.

Bushara Kazim, Srish Kumar Mishra,

Advocates.

CORAM:

JUSTICE PRATHIBA M. SINGH

Prathiba M. Singh, J.(Oral)

1.

This hearing has been done through hybrid mode.

I.A. 161/2022 (for delay)

2.

The present application has been filed by the Appellant seeking

condonation of delay of 100 days in filing the present appeal. In view of the

reasons stated in the application, and the order dated 23^rd September, 2021

passed by the Supreme Court in Suo Moto Writ Petition (C) No. 3 of 2020

titled In Re: Cognizance for Extension of Limitation, the said delay is

condoned.

3.

I.A.161/2022 is disposed of.

C.A.(COMM.IPD-PAT) 4/2022

4.

The present appeal under section 117A (2) of the Patents Act, 1970

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/001206

(hereinafter “Act”) challenges the impugned order passed by the Deputy

Controller of Patents & Designs dated 16th June, 2021. By the impugned

order, the Appellant’s patent application bearing no. 202014010848 for the

invention ‘Efficient Method and Apparatus for Producing Compressed

Structural Fiberboard’ (hereinafter ‘subject invention’) has been refused on

the ground of lack of inventive step under Section 2(1)(ja) of the Act.

5. The background of the case is that the Appellant-Agriboard

International LLC, a company based in the United States, filed a patent

application on 14^th March, 2019 in the US being priority application bearing

No.16/353,624. The corresponding Indian application was filed on 13^th

March, 2020 before the Indian Patent Office (“IPO”) claiming priority from

the US patent application (hereinafter ‘priority application’). Upon filing of

the request for examination, the application of the Appellant was examined

by the IPO.

6. In the First Examination Report (hereinafter ‘FER’) dated 21st July,

2020 objections relating to novelty under Section 2(1)(j) of the Act on the

ground of the subject invention being anticipated, and lack of inventive step

under Section 2(1)(ja) of the Act for the invention being obvious were taken.

Claims 1-15 of the patent application were found to be obvious in view of

the teaching of the following three documents in the FER:

“Document D1: US5945132A

Document D2: US20090188642A1

Document D3: CN102026785B”

7.

The response to the FER was filed by the Appellant on 21^st February,

2021. After holding a hearing and filing of written submissions, vide the

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/001206

impugned order, the application for grant of patent for the subject invention

was rejected. The impugned order is a short order and the same is extracted

below:

“Decision

54)extruding the agricultural fibrous matter to

form

a

continuous

compressed

structural

fiberboard using an extruder having a cyclic

ram that is actuated and driven by electric linear

actuators; {(column 5 lines 20-31), Extruder

effect produce by the reciprocating ram of

packer disclosed in D1 is significantly similar to

the effect of extruder having a cyclic ram of

instant invention, thus having no inventive

ingenuity.} monitoring the density of the

compressed structural fiberboard; (column 5

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/001206

hearing as well as all the documents on record I

hereby conclude that alleged invention is lacking

in inventive step(see Para 1)). Therefore I hereby

refuse this application u/s 2(1)(ja)of the Act.

Dated this 16th June, 2021”

8.

The submission of Mr. Vineet Rohilla, ld. Counsel appearing for the

Appellant, is that th