On the Delhi High Court’s decision rejecting Saint Gobain’s appeal against a rejection order, Srishti Gaur explains the Court’s rationale on non-obviousness and novelty, and highlights why the Court was right in rejecting the argument for granting a patent merely because it had been granted by a foreign jurisdiction. Srishti is a third-year student at National Law University, Delhi. Her previous posts can be accessed here.
Not Every Shiny Idea Travels Well to be an Invention! Lessons from the Saint-Gobain Patent Battle
By Srishti Gaur
Acquiring a patent is no child’s game and its pursuit has to be grounded in substantive merit. This point was well-reflected in the DHC’s reasoned decision in Saint Gobain Glass France v Assistance Controller of Patents and Designs, where the Court set the tone right on non-obviousness assessment of a patent claim and its technical contribution.
The order was passed on September 11, in Saint Gobain’s appeal challenging the decision of the Patent Controller rejecting its patent application. The said application concerned a single-stack, single silver layer configuration with Nickel or Chromium blocking layers, which was created to achieve “unique reflective properties”. The Court concluded that Saint Gobain’s subject does not meet the required standard of patentability and even having a French patent on the invention could not tip the scales in its favour.
The blog post unpacks the judgment and assesses why it stands out as a well-reasoned decision of the Court with particular emphasis on three aspects – the interpretation of technical advancement, the permissibility of mosaicing prior art to determine obviousness of the application, and the treatment of the patent granted by a foreign patent office on the same invention in the Indian patent examination.
What is the Case About?
Saint Gobain Glass France, an entity based in France, applied for a patent for its ‘material comprising a stack of thin layers’ in India. Right from the beginning of the examination, the lack of inventiveness of the subject matter was pointed out to the applicant. The Controller issued the First Examination Report raising objections on the lack of novelty and non-obviousness of the patent application. A pre grant opposition was also filed by Asahi Glass India Ltd. against the application, alleging that the invention was obvious and not novel.
After the examination and the hearing, the applicant and the opponent, on 5th January 2024, the patent application was rejected on the grounds of obviousness (pdf). The Patent Controller reached the decision on the grounds that it lacks inventive step as required under Sections 2(1)(ja) and 25(1)(e) of the Patents Act, 1970 (“the Act”). The Controller pointed out that the inventiveness of the application was not substantiated either in the complete specification or in the experimental data. Against this order, Saint Gobain appealed to the DHC, trying its luck to reach a decision in its favour.
The Devil was Found in the Data
In an attempt to salvage its bid, Saint Gobain pressed a twofold attack. It argued that the Controller did not appreciate the technical advancement that the application offers over prior art. In a clever submission, it alleged that the Controller, on one hand, claims that there is no insufficiency in the disclosure while holding the values in the complete specification to be missing.
To demonstrate non-technical advancement over prior arts, reliance is placed on substantive and credible data rather than any superficial analysis (see this and this). However, Saint Gobain’s claim turned pale once numbers were laid bare.
In its specification, the values of the solar factor value, the light transmission target, and the light reflection of the product were almost identical of the similar existing materials in the market. Even in the expert affidavit, many of the key values were absent. Without credible and proper proof, technical advancement cannot be proved as such and this also affects the probative value of the product. Relying on Novartis AG v Union of India (for more, see here and here), the DHC dismissed Saint Gobain’s claim due to its lack of data.
As for the charge of a contradictory statement of the Controller, the Court reasoned that both are different and cannot be juxtaposed. It is pertinent to note that in India, the applicant has to submit the best method of innovation under Section 10(4) of the Act, without which the application can be revoked. Further, if the claim is not sufficiently and clearly defined in the complete specification, then a revocation can take place under Section 64(1)(a) of the Act (see here). In the present case, the Controller did not object to insufficiency of disclosure but that of the specification where Saint Gobain failed to demonstrate technical advancement.
When Prior Arts Told the Whole Story
In a last-ditch argument, Saint Gobain also claimed that the Controller merely “cherry-picked” elements from prior art and argued that hindsight was applied to reach the conclusion which is not permissible.
Firstly, the argument was flawed since mosaicing of prior arts is allowed to establish obviousness if the cited prior will lead the skilled person to do the same (see this). As Bristol-Myers Squibb Holdings laid out, mosaicing can be done but in a logical and reasonable fashion. Often times, the attempt to avoid ‘hindsight reconstruction’, referring to the idea that the invention under scrutiny should not be the basis to piece together prior arts, makes the courts lose sight of analysing the prior art on its own merits (see here).
An invention is patentable only when a craftsman with general knowledge and prior arts would not reach the same end product to solve the same problem as the applicant (see here). In the case under discussion, all the prior art belonged to the same technical field as that of Saint Gobain’s. If a person skilled in the art, seeking to solve that very problem, finds all the prior arts in the same field, it naturally motivates them to connect prior arts together to reach the same conclusion as the application.
The essential elements of Saint Gobain’s product – single silver functional layer, a blocking layer of nickel or chromium and reflection and colour which can be tuned through thickness variation – were found disclosed in its prior arts. The Court assessed each prior art document and concluded that Saint Gobain’s invention does not involve an inventive step beyond what was already suggested in the prior arts and thus, lacks novelty.
The French Patent Fallacy
Saint Gobain argued that a corresponding patent application succeeded in France, so it should be granted in India as well. The analogy might seem convincing but patent law does not work that way. Since patent rights are territorial in nature – granting a patent in one jurisdiction has no bearing on the other – the argument held no ground. To obtain patent protection in other countries, separate patent applications are filed in each of the countries.
The fallacy of the argument runs deeper than what might seem on the surface due to the differential patent examination system of France and India. In 2019, France introduced the law relating to the “Action Plan for the Growth and Transformation of Enterprises”, known as PACTE, enforceable to applications filed on or after 22 May 2020, and implemented several steps including examination of inventive step and opposition procedure. Pre-2020, the French patent regime was comparatively simplistic – the French Patent Office (INPI) did not engage in a full substantive examination. It could refuse a grant on limited grounds such as non-patentable subject matter or if the invention lacked novelty and could not undertake an assessment of the inventive step (then Article L. 612-12 CPI).
As per the information available here, the application process for Saint Gobain’s invention began in 2015 and was finally granted in 2022. Saint Gobain received its patent in France under the earlier registration-based system which is diametrically opposite to the Indian regime of substantive examination. To argue that the French grant should hold any persuasive power over the Indian outcome is misleading, taking into note the fundamental differences between the two systems.
I would like to thank the anonymous commenter for pointing out the difference between the French and Indian patent examination.