The Calcutta High Court in the case Groz-Beck- ert KG v. Union of India & Ors observed in the case while hearing an appeal under Section 117A(2) of the Patents Act, the court has ruled
that for applying the test of inventiveness of an invention being sought to be registered under the Act, the court has to apply the same by considering the invention as a whole. Further, it has been noted by the court that as regards determining the obviousness of such invention, the court ought for applying such standard strictly and objectively without dissecting such application for registration into isolated elements. In the present case, the court was hearing challenge to the order of Assistant Controller of Patents and Designs wherein it has been claimed by the appellant that the application for registration of an invention which is being titled “Head for process-
ing Tape-Shaped material and the method for manufacture thereof” by Groz-Beckert KG. Before the court, it has been contended by the counsel appearing for the appellant that the court has set aside the impugned order for failing to consider the said invention as a whole by erroneously segregating the said invention and further failed in considering the multiple features of the said invention. Therefore, the court agreed with the submissions made by the appellant wherein noting the said impugned order dissected the subjectinvention into two isolated elements by char-
acterising the subject invention as having two main features. The court stated while relying upon the said paragraph 9.03.03.02 of the Indian Manual of Patent Office Practice and the Procedure together with the decision taken by the Supreme Court in the case Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries. The Single judge bench headed by Justice Ravi Krishan Kapur observed while determining the inventive steps, the said inven-
tion needs to be considered as a whole. Thus, it not being sufficient for the court to draw the conclusion that a claimed invention is being obvious merely because the individual parts of the claim which is taken separately are known or it might be found to be obvious. The conten-
tion made before the court is that an invention is obvious in relation to a particular item must
be treated with care and caution. The court stated while doing so, the whole picture which
is being presented and should be taken into consideration and not a partial one. Thus,
there should be an element of preciseness about what is asserted to be common gen-
eral knowledge and the “obviousness” must also be strictly and objectively judged.” The
said court finds the erroneous inasmuch as it dissects the subject application into two
isolated elements and the critical feature of having technical advance, as described by the
appellant has also been ignored. The impugned order primarily relies on a document marked D4 which being the appellant’s own patent and has failed to consider the subject invention at hand which is an improvement thereon. Therefore, the impugned order fails to apply the test of determination of inventive steps and while considering the invention as a whole. The con-
clusion that the invention lacks inventive steps is also being unreasoned. The findings of the
said matter are also based on incomplete facts and is bereft of reasons. Accordingly, the court set aside the impugned order of the Assistant Controller of Patents and Designs by remanding the instant proceeding back to the said adjudicating authority with a direction for consid- ering the said application for registration of the said invention afresh within a period of three weeks.
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