Introduction

The case of Avery Dennison Corporation v. Controller of Patents and Designs (2022 DHC 4697) addressed pivotal issues concerning the assessment of inventive step under the Patents Act, 1970. This high-profile appeal concerned Avery Dennison’s application for a patent titled “Notched Fastener,” which was initially refused by the Controller General of Patents and Designs. The crux of the dispute lay in whether the claimed invention constituted an inventive step as required by Section 2(1)(ja) of the Act. This commentary delves into the intricacies of the case, the court's reasoning, and the implications of the judgment on future patent applications.

Summary of the Judgment

The Delhi High Court, presided over by Justice Prathiba M. Singh, allowed Avery Dennison Corporation’s appeal against the refusal of their patent application for the “Notched Fastener.” The Controller had initially rejected the application on the grounds of lack of inventive step, referencing prior art documents D2 and D3. The court meticulously analyzed the arguments presented by both parties, examined relevant legal precedents, and ultimately concluded that the subject patent did indeed involve an inventive step, thereby meriting patent protection. The dismissal of the Controller’s objections underscores the nuanced approach required in evaluating inventive steps, especially in technical domains.

Analysis

Precedents Cited

The judgment references several key precedents and legal tests pivotal in determining inventive step:

• Windsurfing International Inc. v. Tabur Marine Ltd. - Introduced a four-step test for assessing inventive step.
• Pozzoli Spa v. BDMO SA - Modified the Windsurfing test to a more detailed framework.
• F. Hoffmann-La Roche Ltd. v. Cipla Ltd. - Added further steps to the inventive step analysis.
• Actavis v. ICOS - Identified ten considerations for assessing obviousness.
• Agriboard International LLC. v. Deputy Controller of Patents & Designs - Emphasized the necessity of detailed analysis when rejecting for lack of inventive step.
• Bristol-Myers Squibb Holdings v. BDR Pharmaceuticals - Outlined principles to avoid hindsight bias in obviousness determinations.

These precedents collectively shaped the court's approach in evaluating whether the “Notched Fastener” was an obvious advancement over existing technologies.

Legal Reasoning

The court employed a comprehensive analysis of the inventive step, adhering to established legal tests:

• Identification of Inventive Concept: The court first identified the unique features of the notched fastener, focusing on the creation, position, shape, and direction of the notches.
• Comparison with Prior Art: The primary prior art, Document D2, was scrutinized. The court noted significant differences in the notch design and engagement mechanism, highlighting how these differences addressed specific technical shortcomings of D2, such as inconsistency in fastener cutting.
• Assessment of Obviousness: Utilizing the “obvious to try” and “problem/solution” approaches, the court concluded that the modifications were not straightforward or obvious to a skilled person in the art.
• Consideration of Economic Significance: The court acknowledged the economic advantages proposed by the subject patent, such as reduced manufacturing complexity and costs, further reinforcing the inventive step.

The court critically evaluated the Controller’s assertion that the differences were superficial, determining instead that these distinctions had substantial technical and economic impacts.

Impact

This judgment has significant implications for future patent applications, particularly in the realm of mechanical and technical inventions. By reinforcing the necessity of a thorough and context-sensitive analysis of inventive step, the court provides clearer guidance on how modifications to existing technologies should be evaluated. It underscores that even seemingly minor alterations, if they yield technical or economic benefits, can meet the threshold of an inventive step. Additionally, the dismissal of evergreening allegations in this context illustrates a balanced approach towards evaluating the genuine innovation versus strategic patent extensions.

Complex Concepts Simplified

Inventive Step

An inventive step refers to a feature of an invention that is not obvious to a person skilled in the relevant field. It must represent a technical advancement over existing knowledge or have economic significance, ensuring the invention is not an obvious modification of prior art.

Prior Art

Prior art encompasses all existing knowledge, patents, publications, and public disclosures relevant to an invention before the patent application’s priority date. It serves as a benchmark to assess the novelty and inventive step of the claimed invention.

Obvious to Try

The obvious to try approach assesses whether the steps leading to the invention would have been evident or routine for a skilled person to attempt, given the prior art.

Hindsight Bias

Hindsight bias occurs when the analysis of an invention’s obviousness is influenced by knowledge of the invention itself, leading to an inaccurate assessment of its inventive step.

Conclusion

The Delhi High Court’s decision in Avery Dennison Corporation v. Controller of Patents and Designs underscores the meticulous evaluation required in establishing an inventive step. By dissecting the differences between the subject patent and prior art, and by applying robust legal frameworks, the court upheld the importance of genuine innovation. This judgment not only validates Avery Dennison's “Notched Fastener” as a patentable invention but also sets a precedent for future cases where the inventive step is a central contention. It reinforces that even incremental advancements, when coupled with technical and economic benefits, merit patent protection, thereby encouraging continuous innovation.