In a recent development, the Delhi High Court has directed the Patents Office to revise the Manual of Patent Office Practice and Procedure to accommodate the growing complexities arising from advancements in artificial intelligence (AI) and machine learning technologies. The court emphasized the need for better guidance for Examiners and Controllers to effectively handle intricate matters in these emerging fields.
The court order, issued by Justice Amit Bansal on June 2, highlighted the surge in patent filings related to AI systems, machine learning functions, agrochemicals, pharmaceuticals, and manufacturing methods. These applications often involve a multitude of interlinked features and a high number of claims, necessitating an updated manual to aid Examiners and Controllers in addressing challenges such as objections regarding lack of clarity and succinctness.
The court urged the Office of the Controller General of Patents, Designs, and Trademarks to promptly revise the Manual for Practice to equip Examiners and Controllers with the necessary tools to evaluate inventions’ clarity and succinctness. Furthermore, the court suggested considering comprehensive technical and patent analytics training for the Examiners and Controllers to enhance their proficiency in handling complex patent applications.
This directive from the court stemmed from a case filed by AGFA NV, a company that appealed against the rejection of their patent applications by the Assistant Controller of Patents and Designs. AGFA’s application focused on the “Manufacturing of Decorative Laminates by Inkjet” and was declined due to claims that were deemed vague and lacking clarity, thereby failing to meet the requirements under Sections 10(4)(c) and 10(5) of the Patents Act. The Patent Office also argued that these claims were not patentable under Section 2(10)(a) of the Act.
Justice Bansal critically examined the case and observed that the rejected order lacked reasoning regarding the novelty or inventive features of the claims. Notably, AGFA’s patent application had been granted in various other jurisdictions, including the United States, the United Kingdom, Australia, China, and several European countries. Consequently, the court overturned the June 17, 2022 order and directed the Patent Office to grant the patent pending the completion of necessary formalities.
The court instructed the case to be listed before the Patent Office on June 14, 2023, for the finalization of the required procedures. Additionally, a copy of the court order was to be forwarded to the Controller General of Patents, Designs, and Trademarks.
Advocates Essenese Obhan, Aparna Kareer, and Ayesha Guhathakurta represented AGFA NV, while Central Government Standing Counsel (CGSC) Harish Vaidyanathan Shankar, along with advocates Srish Kumar Mishra, Sagar Mehlawat, and Alexander Mathai Paikaday, appeared on behalf of the Assistant Controller of Patents and Designs.
