This case pertains to invention titled "Opposed Piston Engine with Non-Collinear
Axes of Translation," the rejection of the patent application and subsequent
reversal on appeal underscore the complexities of patent law and the importance
of legal analysis in patent disputes. This article provides a detailed analysis
of the case, examining the grounds for rejection, the appellate court's
observations, and the implications for patent applicants and the patent system.
Background:
The appellants sought patent protection for their invention related to
opposed piston engines, specifically focusing on the arrangement of pistons with
non-collinear axes of translation. The application, filed in 2012, faced
substantive objections, primarily concerning the inventive step in light of
cited prior art documents. The Patent Office rejected the application, citing
lack of inventive step in view of the cited documents.
However, the appellants appealed the decision to the Hon'ble High Court,
challenging the rejection and presenting arguments to support the patentability
of their invention. The court's analysis and subsequent decision offer valuable
insights into the interpretation and application of patent law principles.
Court's Analysis:
The Hon'ble High Court meticulously reviewed the grounds for rejection and
evaluated the arguments presented by the appellants. The court noted that the
cited prior art documents did not explicitly teach or suggest the features
claimed in the invention. Crucially, the court observed that there was no
motivation or suggestion in the cited documents that would render the claimed
features obvious to a person skilled in the art.
Furthermore, the court considered the amendments made to the patent claims
during the appellate process. It found that the amended claims were within the
scope of the complete specification of the claimed invention. As per Section 59
of the Patents Act, the court held that such amendments were permissible,
especially when the features were already disclosed as an option in the complete
specification.
Outcome and Implications:
In light of its analysis, the Hon'ble High Court set aside the impugned
order rejecting the patent application. The court directed the controller of
patents to reconsider the application and dispose of it within a specified
timeframe.
The reversal of the rejection underscores the importance of a thorough legal
analysis and strategic approach in patent disputes. The case highlights the
significance of clear and comprehensive patent specifications, as well as the
potential for amendments to strengthen patent claims during the appellate
process.
Conclusion:
The case of the "Opposed Piston Engine with Non-Collinear Axes of Translation"
patent application offers valuable insights into the intricacies of patent law
and the patent application process. It emphasizes the need for inventors to
navigate the complexities of patent examination and appeals with a nuanced
understanding of legal principles and strategic considerations.
The Case Discussed:
Case Title: Pinnacle Engines Inc Vs Assistant Controller of Patent and
Designs
Judgment/Order Date: 30.04.2024
Case No:CMA(PT)/17/2023
Neutral Citation:2024:MHC:1951
Name of Court: Madras High Court
Name of Hon'ble Judge: Senthilkumar Ramamoorthy.H.J.
Disclaimer:
This article is meant for informational purposes only and should not be
construed as substitute for legal advice as Ideas, thoughts, views, information,
discussions and interpretation perceived and expressed herein are are subject to
my subjectivity and may contain human errors in perception, interpretation and
presentation of the fact and issue of law involved herein.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and
Trademark Attorney
Email:
[email protected], Ph no: 9990389539
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