An appeal filed by the Appellant, Avery Dennison Corporation against an order dated 12^th August, 2021 of the Controller General of Patents and Design, has been allowed by the Delhi High Court (DHC) and a patent granted.

The impugned order refused the application for grant of a patent titled ‘Notched Fastener’ bearing Application No. 5160/DELNP/2013, on the ground that the claimed subject matter of the subject patent does not constitute an invention under Section 2(1)(j) of the Act.

As per the appellant, the inventive step in the subject patent application is in the

The Court laid down the following fundamental principles, while analysing inventive step of the present case:

i. That simplicity does not defeat an invention – even simple inventions are patentable; and

ii. The inventive step has to be assessed on the basis of the date of priority of the subject patent and not after the publication of the same i.e., it is not permissible to do a hindsight analysis or an ex-post facto analysis.

As per the Court, one of the sure tests in analyzing the existence of inventive step is also the time gap between the prior art document and the invention under consideration. The Court noted that , if a long time has passed since the prior art was published and a simple change resulted in unpredictable advantages which no one had thought of for a long time, the Court would tilt in favor of holding that the invention is not obvious.

With regard to the case in hand, the Court held that the fact that, the invention claimed is not obvious to a person skilled in the art is clear from the lack of any prior art document addressing the problems in the prior art and suggesting any solutions close to the invention despite the gap of more than 18 years from the closest prior art (D2: WO 94/10044A1 Pub Date: 11/05/1994) and the present invention.

The Court further considered that, D1 and D3, the other two prior arts cited by the Controller while refusing the application (D1: GB2053296A Pub Date: 04/02/1981; D3: US4456123A Pub Date: 26/06/1984) are of a period prior to D2, though, dealing with fastening guns and fasteners.

The Court, also noted, that the closest prior art identified is D2 and the subject application discloses a technical advancement in comparison with the closest prior art and the features comprising inventive step are not obvious to a person skilled in the art and therefore, the subject patent application satisfies the test of inventive step.

The Court held that the Controller’s finding that any person skilled in the art could make the variation and modifications in D2 to arrive at the subject invention, is not tenable. The differences which the Controller describes as `superficial’ as per the Court, may appear simple, but ,clearly have an impact on the product concerned.

The Court also noted the fact that the corresponding patent applications in various jurisdictions have already been granted in the USA, Japan, South Korea and China.