In Arti Srivastava vs The Assistant Controller of Patents [C.A.(COMM.IPD-PAT) 252/2022], the Delhi High Court dismissed the appeal challenging the refusal of patent application number 1774/DEL/2006, entitled “Method and System for Detecting Counterfeit Products”. The Controller had refused the application on the grounds of lack of inventive step and insufficiency of disclosure under Section 10(4)(a) of the Patents Act. While the Court found that the objection relating to lack of inventive step was unsustainable, it upheld the refusal on the ground of insufficiency of disclosure under Section 10(4)(a) and additionally held that the claims were not fairly based on the disclosure as required under Section 10(5).

The judgment provides a detailed discussion on the scope of the enablement requirement. The Court reaffirmed that a patent specification must do more than merely describe the broad concept of an invention. It must disclose sufficient technical details to enable a Person Skilled in the Art (PSITA) to perform the invention without undertaking further research or inventive effort.

The subject application related to a system for detecting counterfeit products through the use of special identification codes affixed to product packaging. The application claimed a system in which each product carries two alphanumeric codes, a visible code printed on the packaging and a second code concealed beneath a scratchable coating. When the user transmits these codes to a central data centre through various communication channels such as telephone, SMS, e-mail, internet, fax, or mobile phone, the data centre verifies the codes and communicates the genuineness of the product. The system sought to address shortcomings in existing anti-counterfeiting technologies by enabling ordinary consumers to independently verify product authenticity without specialised equipment.

The Controller refused the application on the grounds of lack of inventive step in view of D1-D5 and insufficiency of disclosure. The Controller held that the complete specification failed to sufficiently disclose:

• How data transmission and reception would occur;
• How authentication would be performed; and
• How verification would take place at the data centre.

Before the Court, the Appellant contended that:

• The Controller failed to appreciate the inventive concept of the invention. According to the Appellant, the novelty and inventiveness lay in the use of two distinct authentication codes on the product packaging. It was contended that none of the cited prior art documents disclosed this arrangement.
• The complete specification adequately disclosed the invention and its operation. The specification contained detailed descriptions, flowcharts, diagrams, and explanations of how the codes were transmitted and verified.
• The Controller erred in demanding disclosure of matters that would fall within the ordinary knowledge of a PSITA. As per the Appellant, once the concept of dual-code authentication was disclosed, the subsequent steps relating to transmission, comparison, and verification would be obvious to a PSITA and therefore did not require exhaustive disclosure.

At the outset, the Court observed that one of the principal prior art documents relied upon by the Controller, namely D1, post-dated the filing date of the subject application by seven days and hence could not be cited against the application. The Court observed that, once D1 was excluded, the basis of the inventive-step objection founded on D1 read with D5 no longer survived, and therefore the objection under Section 2(1)(ja) could not be sustained.

The central issue before the Court was whether the complete specification satisfied the requirements of Section 10(4)(a), which mandates that the specification must:

• fully and particularly describe the invention;
• describe its operation or use; and
• explain the method by which it is to be performed.

The Court emphasised that the statutory requirement extends beyond merely identifying the inventive concept. A patent specification must contain sufficient technical information to enable a PSITA to access the invention and clearly specify the process and methodology by which it operates.

According to the Court, the invention claimed not merely the existence of two authentication codes but an entire verification system involving transmission, processing, authentication and communication of results. The Court, however, found that the specification disclosed only broad functional outcomes and not the technical means for achieving them.

For instance, the specification stated that users would send codes to the data centre; the data centre would process and verify the codes; and the data centre would return authenticity results. However, the specification did not explain how the codes would be processed, how verification would occur, how data would be stored, how repeat inquiries would be handled, how digital information would be converted and transmitted, what protocols would be used, or what architecture would support these operations. The Court held that these were not peripheral details but essential elements for carrying out the invention.

Relying on the Bombay High Court’s decision in Farbwerke Hoechst vs Unichem Laboratories, the Court reiterated that sufficiency of disclosure requires that the specification describe an embodiment of the invention in a manner that enables a PSITA to perform it without undertaking undue experimentation. The Court observed that the specification failed the enablement test because it left crucial aspects of the invention to be independently worked out by the PSITA.

The Court also referred to its earlier decision in Titan Umreifungstechnik GmbH vs Assistant Controller of Patents, where it had clarified that although working examples are not mandatory for every invention, the specification must nevertheless provide a complete and reproducible disclosure. The Court distinguished the present case from Titan by observing that the deficiency here was not merely the absence of examples but the absence of critical technical information itself. The Court further relied upon the Madras High Court’s decision in Caleb Suresh Motupalli vs Controller of Patents, which held that claims lacking technological enablement fail Section 10(4)(a).

The claims recited components such as a processor, a receiver, and a transmitter. However, the specification contained no disclosure regarding the structure, operation or implementation of these claimed components. Significantly, apart from upholding the objection under Section 10(4)(a), the Court also held that the application was barred under Section 10(5). Relying upon the principles discussed in Caleb Suresh Motupalli, the Court observed that the fair-basis requirement demands that the specification enable the invention across the full scope of the monopoly claimed. Since the specification failed to disclose workable embodiments corresponding to several claimed features, the claims failed the fair-basis requirement under Section 10(5).

Accordingly, the Court dismissed the appeal and upheld the refusal of the patent application.