Introduction:

In the case of Dong Yang PC, Inc v. Controller Of Patents And Designs [C.A. (COMM.IPD-PAT) 60/2024], the Delhi High Court, presided over by Justice Mini Pushkarna, examined the scope of “inventive step” and the misconception that simplicity disqualifies an invention from being patentable. The dispute revolved around the rejection of a patent application by Dong Yang PC Inc., a South Korean company engaged in developing automated vertical rotary car parking systems, on the grounds that the claimed invention lacked inventive step as per Section 2(1)(ja) of the Patents Act. The Controller of Patents cited the company’s own prior art (D-5) and claimed that the modifications introduced were minor and thus “obvious.” However, the High Court rejected this oversimplification and highlighted the significance of technical ingenuity, even in seemingly simple innovations.

Arguments by Appellant:

Dong Yang PC Inc. argued that its new vertical rotary parking system, though inspired by its earlier design D-5, involved significant technical improvement through reconfiguration of the male and female coupling elements. These adjustments were not cosmetic but structural, resulting in reduced friction and quieter operation—an important innovation in automated parking systems. The appellant contended that the claimed invention addressed a specific technical problem and that these changes were neither arbitrary nor within the realm of common general knowledge. Emphasizing that no one else in the industry had conceived or implemented such improvements since the publication of D-5, the appellant submitted that the novelty of their reconfiguration demonstrated a non-obvious inventive step worthy of protection under Indian patent law. They further argued that the Controller failed to provide substantive reasoning or documentary evidence to support the claim of obviousness and that mere mechanical modification cannot be equated with the required level of inventive ingenuity. The appellant’s counsel, Mr. Pravin Anand and Mr. Ravi Aggarwal, drew attention to Indian precedents, including Avery Dennison Corporation v. Controller of Patents and Designs (2022), which held that the time elapsed between the prior art and the claimed invention is a reliable indicator of whether an inventive step exists. In their view, the Controller not only misunderstood the technological progression involved but also relied on a vague assertion that any skilled person with common general knowledge could have arrived at this invention, without specifying what such common knowledge entailed or pointing to relevant material to support it.

Arguments by Respondent (Controller of Patents and Designs):

The Controller of Patents, represented by Mr. Ankur Mittal and Mr. Aviraj Pandey, defended the rejection order by arguing that the differences introduced by the appellant in their new parking system were minor and did not amount to a technical advancement. They stated that the new system closely resembled the D-5 publication authored by the appellant themselves and that the structural adjustments described were well within the reach of a person skilled in the art. According to the respondent, there was nothing novel or non-obvious about the modifications, which they viewed as “workshop improvements” lacking in inventive spark. The Controller maintained that patent law does not exist to protect mere design tweaks or aesthetic variations unless these changes contribute significantly to the art. They argued that granting patents for such marginal developments would flood the system with frivolous applications and dilute the standard required for inventive step. While asserting that the invention was predictable to anyone with general industry knowledge, the respondent failed to cite authoritative technical documents, textbooks, or patents to substantiate the notion that the claimed invention was readily foreseeable based on D-5.

Court’s Analysis and Judgment:

The Delhi High Court firmly set aside the rationale employed by the Controller. Justice Mini Pushkarna observed that there was an evident lack of foundational reasoning in the rejection. The Controller had failed to establish how the invention lacked technical advancement or why the modifications did not meet the standard of non-obviousness. The Court reiterated that simplicity in an invention should not be confused with a lack of ingenuity. Relying on established jurisprudence, especially the ruling in Avery Dennison, the Court pointed out that one reliable test for evaluating inventive step is examining the time gap between the prior art and the new invention. Here, although the cited prior art was of the appellant’s own making, the fact that no third party had come up with similar improvements over time underscored that the invention was not obvious. The Court found that the Controller had not brought on record any evidence demonstrating that the specific reconfiguration of the coupling elements could be derived naturally by someone skilled in the art. Simply labeling the improvements as “mechanical” did not satisfy the legal threshold. Importantly, the Court noted that the Controller’s reference to “common general knowledge” was entirely vague and unsupported by any material record. The judgment emphasized that while evaluating patentability, authorities must go beyond superficial differences and examine whether the new product or process solves a technical problem with ingenuity. The Court stated, “It needs no emphasis that simplicity is no bar to patentability and even simple changes can introduce discernible and substantive differences, leading to a new invention.” The lack of detailed examination and failure to substantiate claims of obviousness or provide citations to common technical knowledge rendered the order unsustainable. Thus, the Court directed that Dong Yang’s patent application be re-examined afresh, taking into account the deficiencies highlighted in the judgment and assessing the matter in accordance with the correct legal principles governing inventive step, novelty, and technical advancement.