The Delhi High Court has dismissed an appeal by Saint Gobain Glass France against the refusal of its patent application by the Assistant Controller of Patents and Designs (“Controller”).
In January 2024, the Controller had refused the patent application for “Material comprising a stack of thin layers”, holding that the claimed invention lacked an inventive step under Section 2(1)(ja) of the Patents Act, 1970. The Controller relied on the five-step test laid down in F. Hoffmann-La Roche Ltd. vs. Cipla Ltd.[1] and found that the claimed improvements were obvious to a person skilled in glass construction and manufacturing.
Appellant contended that the Controller had wrongly combined elements of prior art without providing any cogent reason to justify the “mosaicking” of the cited documents, and had thereby failed to appreciate the technical advancement claimed in the invention. The company highlighted experimental data and an expert affidavit to show improved reflective and transmission properties, while also pointing to corresponding foreign patent grants.
Justice Amit Bansal, however, upheld the Controller’s reasoning, observing that the data failed to establish any meaningful advancement over prior art. One comparative example already achieved identical performance parameters like solar factor, light transmission, and reflection values. The Court observed that the appellant failed to provide the data required under Section 2(1)(ja) of the Patents Act, 1970 to demonstrate any technical advancement of the claimed invention. It noted the insufficiency of supporting parameters in the expert affidavit and the subsequent shifting of values.
The Court also rejected the petitioner’s contention that a patent should be granted in India merely because the subject invention had been granted protection in France. It reiterated that foreign patent decisions have no bearing on Indian proceedings. The grant of a patent in another jurisdiction does not, by itself, create any entitlement to protection in India, where the application must independently satisfy the statutory requirements of novelty and inventive step.
Appearances
Appellant: Mr. Hemant Singh, Ms. Mamta Rani Jha, Mr. Siddhant Sharma, Mr. Abhay Tandon and Mr. Shreyansh Gupta, Advocates.
Respondents: Mr. Nishant Gautam with Mr. Vardhman Kaushik, Mr. Shaurya Mani Pandey and Mr. Prithvi Raj Dey, Advocates for R-1.
Mr. Ranjan Narula, Advocate for R-2.
[1] 2015 SCC OnLine Del 13619
