Agriboard International LLC v. Deputy Controller of Patents and Designs
How much reasoning a Controller's order must contain when an application is refused for lack of inventive step.
What the court held
The Court quashed the order and remitted the matter to the Controller for a fresh decision. It held that an order refusing a patent for obviousness must do three things: say what the cited prior art actually discloses, say what the features of the claimed invention are, and explain why a skilled person would find the step obvious in light of that prior art. Repeating the examination report, or simply asserting obviousness, is not a reasoned order, and the applicant's arguments distinguishing the prior art had to be dealt with.
Why it matters to a reader of this provision
Refusal orders are the point at which many Indian applications end, and appeals against them turn on whether the order can be understood. This judgment fixes a minimum standard of reasoning that Controllers are expected to meet, and gives applicants a clear basis for appeal when an order ignores their submissions. It also restates the inventive step enquiry in a form both examiners and applicants can follow.
Provisions this judgment interprets
Open a provision for the plain-language explanation, the worked example and the forms and deadlines it touches.
Does this judgment affect your matter?
Whether a decision helps or hurts depends entirely on your facts and your claims. A patent professional can tell you which.