Delhi High Court Revives Mechanical Folding Device Patent After Faulting Inconsistent Refusal Order

Delhi High Court Revives Mechanical Folding Device Patent After Faulting Inconsistent Refusal Order

Introduction

In Resham Priyadarshini v. Assistant Controller of Patents and Designs & Anr., the Delhi High Court set aside a refusal order passed by the Patent Office rejecting a patent application for a mechanical folding device. The Court held that the rejection stemmed from an incomplete and inconsistent reading of the claims, dependent claims, and drawings, and that the finding on lack of inventive step was unsustainable. The matter was remanded for fresh consideration.

Factual Background

The appellant, inventor Resham Priyadarshini, filed a patent application in March 2020 titled “A Device For Folding Or Bending An Article.” The invention relates to a mechanical system designed to fold or bend an article during industrial processing.

The device, as described in the complete specification, consists of an input conveyor mechanism that transports the article, a moving member that shifts the article onto a platform, a platform that performs the folding or bending function, and an output mechanism that carries the processed article away.

The invention aimed to provide a streamlined mechanical process integrating movement, positioning, and folding within a coordinated structure. The specification included detailed claims, dependent claims, and illustrative drawings.

Procedural Background

In February 2023, the Patent Office refused the application. The Controller held that the main (independent) claim lacked clarity, particularly in defining the input conveyor and output mechanism. The refusal order further concluded that the invention lacked an inventive step over prior art documents.

Aggrieved by the refusal, the inventor approached the Delhi High Court under the appellate jurisdiction concerning intellectual property matters.

Issues

1. Whether the Patent Office erred in concluding that the claims lacked clarity without considering the dependent claims and drawings.

2. Whether the finding of lack of inventive step was sustainable in light of the reasoning adopted in the refusal order.

Contentions of the Parties

The appellant contended that the Controller failed to read the claims as a whole. While the independent claim employed broader language, the dependent claims provided specific technical features clarifying the structure and operation of the input conveyor and output mechanisms. It was argued that the complete specification, when read alongside the drawings, sufficiently disclosed the invention.

The appellant further submitted that the conclusion on lack of inventive step was contradictory. The refusal order stated that the invention was unclear, yet proceeded to compare it with prior art and declare it obvious. This, according to the appellant, demonstrated non-application of mind.

The Respondents maintained that the independent claim lacked precision and that no technical advancement over prior art had been established. They defended the refusal order as consistent with statutory requirements concerning clarity and inventive step.

Reasoning and Analysis

The High Court held that patent claims must be read in conjunction with dependent claims and the complete specification. It observed that the refusal order failed to undertake such a holistic analysis.

The Bench of Justice Manmeet Pritam Singh Arora noted that the dependent claims elaborated upon the structure and functioning of the input conveyor and output mechanisms, and that the drawings further clarified these features. The specification and diagrams, when read together, provided sufficient technical detail to understand the invention.

On the issue of inventive step, the Court found the reasoning internally inconsistent. If the Controller found the technical features unclear, it was logically unsound to then undertake a comparative analysis with prior art and conclude absence of inventive step. The Court observed that a finding of lack of clarity cannot simultaneously form the basis for a definitive assessment of obviousness without resolving the alleged ambiguity.

The Court described the refusal order as “unreasoned and abrupt,” particularly in its conclusion regarding inventive step. It emphasized that patent rejection orders must reflect a reasoned evaluation of claims in light of the specification and prior art.

Decision

The Delhi High Court set aside the Patent Office’s refusal order and remanded the matter for fresh consideration. The Court directed that the application be re-examined in accordance with law, taking into account the complete specification, dependent claims, and drawings.

In this case the appellant was represented by Ms. Rajeshwari H., Ms. Garima Joshi and Mr. Swami Chothe, Advocates. Meanwhile the respondent was represented by Ms. Kangan Roda, SPC with Mr. Tanishq Sharma, Advocate