The appellant- Gogoro Inc. filed an appeal before the Delhi High Court (DHC) challenging the impugned order dated 8th August, 2021 passed by the ld. Asst. Controller of Patents. Vide the impugned order, the Appellant’s application bearing no. 1312/DELNP/2014 for an invention titled “APPARATUS, METHOD AND ARTICLE FOR AUTHENTICATION, SECURITY AND CONTROL OF POWER STORAGE DEVICES SUCH AS BATTERIES” was rejected by the Patent Office. The application of the Appellant has been refused on the ground that section 2(1)(j) of the Patents Act, 1970 has not been complied with.

Appellant summitted that the impugned order is completely unreasoned:-

• The order seeks to suggest that the patent has been rejected for lack of inventive step but in paragraph 5 of the impugned order, it is stated that Section 2(1)(j) of the Act is not complied with.
• Moreover, all the three prior arts which were cited i.e., D1, D2 and D3 have not been considered by the ld. Asst. Controller while passing the impugned order. Only D3 has been
  considered that too without any reason as to why there is lack of inventive step in the invention in question.
• The application of the Appellant had both independent device and independent method claims. However, the independent method claims were also not considered by the Controller and there is no clarity in the impugned order as to which of the claims lack inventive step.
• Moreover, the Appellant also submits that the lack of inventive step can be overcome by amending the claims and Appellant is willing to amend the claims.

The DHC noted that :-

A perusal of the impugned order shows that there is some confusion as to whether the application was rejected for lack of novelty or for inventive step;

In the written submissions submitted before the Court, a statement has been made by the Patent Office that the objection of novelty under Section 2(1)(j) of the Act has been dropped;

The only surviving objection is in respect of lack of inventive step. Qua the said objection, the Controller has cited three prior arts i.e. D1 to D3. Though in the FER, prior arts D1 and D2 and the manner in which they support the lack of inventive step is slightly elaborated, insofar as impugned order is concerned, only prior art D3 seems to have been considered.

Moreover, while arriving at the conclusion that there is a lack of inventive step, there is no elaboration or reasons given by the Controller for the said finding at all. For the Controller to find lack of inventive step, some discussion was required as to how the prior arts render the subject invention obvious to a person skilled in the art.

In view of the above, the DHC held that, the order is completely unreasoned and the fact that there is no discussion as to why the application is being held to be lacking inventive step in view of the prior arts D1, D2 and D3, the impugned order is liable to be set aside and the application is restored to its original position.

The DHC held that, as the Appellant wishes to amend the claims in order to overcome the objections of the Patent Office. Accordingly, the DHC directed the Appellant to file the amended claims before the Controller within 4 weeks and that the Patent Office shall thereafter consider the same in accordance with law.