Inventiveness Test Should Be Applied to Entire Invention, Not Parts

In the matter of Groz-Beckert Kg v Union of India & Ors, the Calcutta High Court heard the appeal of Groz-Beckert KG (GBKG) against the rejection of their patent application by the Controller of Patents and Designs (Controller).

The case dealt with the issue of whether, can an invention be assessed on its constituent parts, while evaluating its patentability.

GBKG’s patent application was for a method and apparatus for processing textile materials, designed to improve the efficiency and functionality in the textile industry, granted in over 11 jurisdictions worldwide. However, the Controller rejected it stating it lacked an inventive step under Section 2(1)(ja) of the Indian Patents Act, 1970 (Act) and also formality issues concerning the submission of the Proof of Right.

GBKG argued that the Controller’s finding was based on an incorrect assessment of the invention by dividing it into two parts, rather than viewing it as an integrated invention comprising of multiple interlinked features.

The Court, referring to the guidance on this aspect provided by the Indian Manual of Patent Office Practice and Procedure (the Manual), agreed with GBKG’s contentions. Citing the precedent set in Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries, the Court emphasized the necessity of strictly and objectively judging the “obviousness” of an invention and considering it in entirety, rather than as isolated parts. The Court also observed that the Controller had overlooked the technical advancements claimed by GBKG. Drawing from the principles outlined in State Bank of India v Ajay Kumar Sood, the Court noted that the rejection was based on incomplete facts and lacked reasoning.

Consequently, the Court overturned the Controller’s decision and directed a fresh evaluation of the patent application within three months, ensuring GBKG’s right to a hearing.