An appeal under section 117A of the Patents Act, 1970 challenging an order dated 24 August 2022 passed by the  Controller of patents rejecting Patent Application No. 201737035802 for an invention titled “CHARGING SYSTEM AND CHARGING METHOD, AND POWER ADAPTER” has been allowed by the Calcutta High Court.

By the impugned order, the patent application was rejected on the ground that the same is not patentable under section 2(1)(j) and section 10(4) of the Act.

The arguments advanced by the appellants were: –

1. The impugned order is a non-speaking order;
2. The impugned order uses the words “novel” and “inventive” interchangeably without appreciating the meaning and content thereof;
3. Two additional prior arts D5 and D6 were cited for the first time in the hearing notice without giving any opportunity to the appellant to respond or make amendments to the same;
4. The Controller has not given any reasons as to why the prior art D1 to D6 ought to be read together to conclude lack of inventive steps in the subject invention.
5. No Second Examination Report (SER) was issued even though the appellant amended their claims after the objections had been raised in the First Examination Report.
6. Non-issuance of SER violates the mandate of section 13(3) of the Act which obliges the Controller  to examine the amended specification.

The Hon’ble Calcutta High Court, allowed the appeal and held the following:-

1. The subject application has been rejected by the respondent for want of novelty. For a lack of Novelty, the prior art document must disclose the whole of the invention and enable the invention. Thus, the prior art document must deal with the subject invention in completeness. An anticipating prior art must also contain sufficient information to allow the invention to be put into practice.
2. However, the Court held that by the impugned order, the Controller has failed to demonstrate how the prior art D1 contains all the elements and deals with the subject invention in its entirety.
3. In finding that the document D1 rendered the subject invention obvious as well as was as an anticipating document the respondent has erred in law. The same document cannot be said to be rendering an invention obvious in combination with other documents where it is supposed to deal with every feature of the subject invention and its mode of operation.
4. The respondent has not been able to demonstrate how D1 destroys the novelty of the subject invention.
5. The prior art D1 having been claimed as an anticipated prior art leading to the subject invention, the same could not have simultaneously rendered the subject invention obvious when read with documents D1 to D6. The tests for novelty and obviousness are different and cannot coexist in connection with the same document.
6. The Court also held that claim passes the test of inventive steps if it discloses a technical advancement in comparison with the closest prior art and the features comprising inventive steps are not obvious to a person skilled in the art (Avery Dennison Corporation v. Controller of Patents and Designs, 2022). If several prior art documents are to be read in combination, there must be some common thread linking the claim with the prior art documents obvious to a person skilled in the art. Otherwise, the combined reading of the prior art documents or mosaicking of the same is impermissible.

The Court further held that Section 13(3) of the Act makes it apparent that upon amendment of the claims, the amendment application ought to be examined in a manner similar to the original application. When a complete specification is amended, such amended specification should be re-examined and a Report issued in the manner stipulated under section 12 of the Act.

The Court held that in passing the impugned order, there has been a violation of the statutory provisions in issuing the hearing notice citing additional objections and relying on the same in without granting an opportunity to the appellant to amend its claim and without issuance of a Second Examination Report.

For the foregoing reasons, the impugned order was considered unsustainable by the Court. The subject patent application has been remanded back to the Controller for reconsideration afresh.

The Controller has been directed to issue a SER and provide the appellant with an opportunity to deal with objections, if any, raised in the said SER.

The Controller is further directed to provide the appellant with an opportunity of being heard before disposing of the said application.