Delhi High Court Sets Aside Order Rejecting Patent For Carbon Dioxide Capture Device

The Delhi High Court has set aside an order of the Assistant Controller of Patents rejecting Enviro Ambient Corporation's patent application for a carbon dioxide capture device, finding the rejection “unreasoned and non-speaking.”

Justice Jyoti Singh observed that a substantial part of the impugned order was devoted to extracting objections raised in the First Examination Report (FER) and referring to prior arts, without properly analysing Enviro's case.

“Regrettably, none of these issues even find mention in the impugned order leave alone their consideration,” the court observed.

The appeal challenged the January 30, 2024 order rejecting Enviro's Indian patent application for an invention titled “Carbon Dioxide Capture Device and Method”.

Enviro had filed the national phase application in India on May 24, 2019, following two US priority applications filed in 2016 and 2017 and a PCT application filed in 2017. The application contained 71 claims, with claims 1 to 24 relating to a method and claims 25 to 71 relating to a system.

The Patent Office rejected the application on two grounds: lack of novelty based on prior art D1 and lack of inventive step based on prior arts D1 to D6.

Before the court, Enviro argued that the impugned order ran into more than 15 pages, but around three-fourths of it merely contained the FER objections, extracted claims, and references to prior art. The company argued that the Controller then reached his conclusions without any discussion or analysis.

The court agreed that the impugned order did not adequately deal with the issues raised by Enviro. After elaborating on the teachings of the prior arts, the Controller concluded in one line that D1 disclosed features of independent claim 1 and claim 25. On inventive step, the Controller simply observed that a person skilled in the art would be motivated by D1 and D3-D6 to arrive at the claimed invention.

“After elaborating in two pages on the teachings of prior arts, Respondent concludes in one line that D1 discloses features of independent claim 1 and claim 25,” the court observed.

The court also found that Enviro's response to the FER and written submissions had set out its case on why the claimed invention was novel and involved an inventive step. The submissions contained a detailed matrix setting out the alleged differences between the claimed invention and the prior art.

The court noted that these submissions were not considered in the rejection order.

On the inventive step, the court further held that the Controller had neither followed the five-step test nor examined the three elements required for such an assessment: what was disclosed in the prior art, what was disclosed in the patent application and how a person skilled in the art would move from the existing knowledge to the claimed invention.

“I am of the view that applications for inventions cannot be rejected in such a cursory or callous manner, as many of the genuine inventions may be beneficial in public interest,” Justice Singh observed.

The court found the matter fit for remand and set aside the January 30, 2024 order. It directed the Assistant Controller to reconsider the patent application after taking into account Enviro's response to the FER and written submissions and after giving the company an opportunity of hearing.

The fresh decision has to be taken within three months.