Delhi High Court Faults Inventive Step Analysis, Revives Emitec Emissions Patent Application

Delhi High Court Faults Inventive Step Analysis, Revives Emitec Emissions Patent Application

Introduction

The Delhi High Court has set aside a Patent Office order rejecting a patent application filed by Emitec Gesellschaft für Emissionstechnologie mbH. The Court held that the rejection failed to apply the mandatory framework for assessing inventive steps, as laid down by binding precedent, and remanded the matter for fresh consideration.

Factual Background

Emitec’s patent application, titled “Tank Assembly and Metering System for a Reducing Agent,” relates to an automotive emissions technology designed to reduce harmful exhaust pollutants. The invention supplies a liquid reducing agent into the exhaust system using a tank with a separate bottom chamber housing a dosing unit and pump for controlled delivery. The application was first filed internationally in September 2010 and entered the Indian national phase in 2012.

Procedural Background

After examination, the Patent Office rejected the application in March 2022, concluding that the claims were obvious in light of prior art and lacked inventive step under the Patents Act. Emitec challenged this refusal before the Delhi High Court. The appeal was heard by Justice Manmeet Pritam Singh Arora, with judgment pronounced on December 24, 2025.

Issues

1. Whether the Patent Office correctly assessed inventive step while rejecting the application.

2. Whether the examiner followed the mandatory analytical framework for inventive step assessment.

3. Whether the rejection order was procedurally sustainable in law.

Contentions of the Parties

Appellant: Emitec argued that the Patent Office skipped foundational steps required to assess inventive steps. It submitted that the refusal order failed to:

• identify the person skilled in the art, articulate the inventive concept, and define the technical problem addressed by the invention.
• According to Emitec, the order jumped directly to a prior-art comparison without laying the necessary groundwork.

Respondents: The Patent Office defended the rejection, contending that the claimed features were already disclosed in prior art and that the alleged differences amounted to routine design variations lacking inventiveness.

Reasoning and Analysis

Justice Arora agreed with Emitec and held that the Patent Office had not applied either expressly or in substance the five-step test for inventive step mandated by the Supreme Court in Cipla Ltd. v. F. Hoffmann-La Roche Ltd. The Court emphasized that this analytical framework is not optional and must guide the assessment.

The Court found that the impugned order failed to identify the person skilled in the art and did not assess obviousness from that perspective, particularly against the backdrop of common general knowledge and cited prior art. It noted that the refusal merely compared claims with earlier disclosures without explaining why the invention would be obvious to the skilled person. Observing that such omissions strike at the heart of inventive-step analysis, the Court held that the rejection was procedurally flawed and could not be sustained.

Decision

The Delhi High Court set aside the Patent Office’s rejection order and remanded the matter for fresh consideration. It directed that Emitec be granted a new hearing and that the application be decided in accordance with law, preferably within three months, after properly applying the mandated inventive-step test.

In this case the appellant was represented by Mr. Manish Aryan, Ms. Manisha Singh, Mr. Abhai Pandey, Mr. Nishant Rai and Mr. Gautam Kumar, Advocates. Meanwhile the respondent was represented by Mr. Rohan Jaitley, Mr Dev Pratap Shahi, Mr. Varun Pratap Singh and Mr. Yogya Bhatia, Advocates.