Delhi High Court Upholds Patent Rejection | Invention Deemed Obvious To Skilled Person Amid Prior Art Overlap
Sanchayita Lahkar
The High Court of Delhi Single Bench of Justice Saurabh Banerjee dismissed an appeal challenging the rejection of a patent application by the Assistant Controller of Patents and Designs. The Court upheld the rejection order dated January 30, 2023, concluding that the claimed invention lacked an inventive step as defined under Section 2(1)(ja) of the Patents Act, 1970. The Court found that the invention was obvious to a person skilled in the art based on prior art documents D1, D2, and D3, including a document authored by one of the inventors of the subject application.
The Court held that the process and product claimed in the subject application overlapped significantly with existing prior art, thus failing the statutory requirement of inventive step. The Court further concluded that the appellant had not demonstrated any technical advancement or economic significance sufficient to meet the threshold under Section 2(1) (ja). Accordingly, the Court dismissed the appeal and sustained the decision of the Assistant Controller to reject the patent application.
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The appellant, Lummus Novolen Technology GmbH, a company incorporated under the laws of Germany, filed Indian Patent Application No. 4278/DELNP/2015 titled "High Performance Ziegler-Natta Catalyst Systems, Process for Producing Such MgCl2 Based Catalysts and Use Thereof" before the Patent Office, New Delhi, on May 19, 2015. The application was published in the Patent Journal on July 22, 2016.
A First Examination Report (FER) dated February 12, 2019, cited documents D1 (EP 1840138 A1), D2 (EP 1609805 A1), and D3 (WO 2009152268 A1) and raised objections under Sections 2(1)(i), 2(1)(ja), 10(4), and Rule 13(7) and 15 of the Patent Rules, 2003. The FER noted the absence of novelty and inventive step, insufficiency of disclosure, and indefiniteness in the claims.
Following the FER, the appellant filed amended claims and subsequently responded to a hearing notice issued by the Controller. A written submission was filed on October 8, 2021, following a hearing. Claims 1 and 10 were deleted, leaving amended Claims 1 to 9. Despite these amendments, the Assistant Controller issued an order on January 30, 2023, rejecting the application on the grounds of lack of inventive step under Section 2(1)(ja).
In appeal, the appellant argued that the impugned order lacked reasoning, failed to address the written submissions, and violated the principles of natural justice. It was contended that the Controller did not properly assess the technical advancement of the invention and instead relied on the European Patent Office's decision, thereby applying a "cut and paste" methodology contrary to the territorial nature of patent law.
The appellant also asserted that patents for similar claims were granted in jurisdictions including the United States, China, Japan, South Korea, and Israel, thereby indicating patentability, commercial interest, and industrial applicability.
The main contention was that the invention involved a non-phthalate-based Ziegler-Natta catalyst using diether compounds as internal donors, resulting in better polymer yields and reduced environmental impact. According to the appellant, the cited documents D1 to D3 did not teach or suggest the claimed process and that the Controller failed to establish motivation for combining the cited prior art documents.
In response, the respondent, represented by the Central Government Standing Counsel, submitted that the appellant had filed two nearly identical patent applications—4277/DELNP/2015 and 4278/DELNP/2015—on the same date. While the former was granted, the latter was rejected due to excessive overlap and lack of inventive merit.
The respondent argued that document D1 disclosed a process similar to the claimed invention, using the same internal donor and achieving similar molecular weight distribution. Document D2 also disclosed catalysts producing polypropylene with comparable molecular weight distribution. Document D3, authored by one of the inventors of the subject application, disclosed a nearly identical process with only minor distinctions.
According to the respondent, a person skilled in the art would have been motivated to combine the teachings of D1, D2, and D3, leading to the claimed invention without inventive effort. It was further argued that the invention was a predictable outcome of the prior art, and the claimed features were already disclosed or suggested.
"From the above abstract, it is borne out that the subject application entails an improved Zeigler-Natta catalyst and method of making the improved catalyst. However, the same is sufficient for grant of a patent has to be seen taking into account the relevant provisions of Section 2(1)(ja) of the 1970 Act."
"In the present case, the Controller has refused the grant of the patent application of the appellant since the invention in subject application did not have an inventive step as defined under of Section 2(1)(ja) of the 1970 Act."
"An invention in a patent application has to have a technical advancement from the existing information available to the public at large in the form of prior art(s); and the embodiments in the Claim(s) made therein when seen from the eyes of a person skilled in the art must not be obvious."
"Applying the aforesaid to the facts of the present case, this Court finds that the Controller has discussed (i) about the prior art; as also (ii) about the invention made in the subject application; and lastly (iii) how the invention in the patent application is obvious to the person skilled in the art."
"The use of diether compound as an internal electron donor and the filtration of a heated reaction mixture to produce a catalyst for making propylene with specific molecular weight distribution (5.75 to 9) by the appellant in light of the cited prior art documents D1, D2 and D3 shows apparent overlap."
"The document D3 (the applicant's own invention) discloses exactly the same process as presently claimed, except that the electron donor is more generally defined... the skilled person would use such a support in the process of example 13 of D1 and add an extraction step as disclosed in the general process of D3 and would arrive at the process of present claim 1."
"The Controller has applied the Could-Would approach to test the obviousness and hold that a person skilled in the art would use such a support in the process of example 13 of D1 and add an extraction step as disclosed in the general process of D3 and would arrive at the process of present claim 1."
"The said Mr. Winter Andreas is himself a person skilled in the art who would have been aware of all that what was involved therein."
"The aforesaid read with the Claims made in the subject application gives an impression that the appellant is attempting to monopolise and evergreen the patent, which cannot be allowed since it will tantamount to evergreening and would give a rebirth to the patent after end of its fixed term."
"The contention that the cited prior art document D3 teaches away from diether as electron donors is incorrect because the said test requires that prior art should suggest the certain approach or solution would not work or is not advisable."
"Accordingly, the present appeal is dismissed, leaving the parties to bear their own costs."
"The Registry is directed to supply a copy of this judgment to the office of the Controller General of Patents, Designs & Trademarks of India on llc-ipo@gov.in for information."
"As such, there is no ground made out for setting aside the well-reasoned impugned order in line with law as also existing various precedent laid down by this Court, more so, since both the process and the product are covered by the cited prior art documents D1, D2 and D3 and the invention in the subject application is obvious to the person skilled in the art under Section 2(1)(ja) of the 1970 Act."
Advocates Representing the Parties:
For the Petitioners: Ms. Vindhya S. Mani, Ms. Naina Gupta, Mr. Bhuvan Malhotra, Ms. Vedika Singhvi, Mr. Ritwik Sharma, Ms. Surbhi Nautiyal, Mr. Devesh Aswal, and Ms. Narshita Agarwal, Advocates
For the Respondents: Ms. Nidhi Raman, CGSC with Mr. Arnav Mittal, Advocate
Case Title: Lummus Novolen Technology GmbH vs. The Assistant Controller of Patents and Designs
Neutral Citation: 2025: DHC:4614
Case Number: C.A.(COMM.IPD-PAT) 12/2023
Bench: Justice Saurabh Banerjee
[Read/Download order]
