Delhi High Court Upholds Rejection Of Patent Application For Counterfeit Product Detection System

The Delhi High Court has dismissed an appeal against the rejection of a patent application for a counterfeit product detection system, holding that the invention failed to meet statutory disclosure requirements because the complete specification did not sufficiently explain how it would actually work.

Justice Tushar Rao Gedela, in a judgment delivered on May 11, held that while the invention proposed a consumer-friendly mechanism to verify genuine products using visible and hidden codes, the complete specification left critical operational details to be worked out by a person skilled in the art, which was impermissible under the Patents Act.

“The question which arises in the present case is whether the PSITA is able to perform the disclosed invention without any further research/tests that go beyond routine trial,” the court said. “In the opinion of this Court, the answer would be negative.”

The appeal was filed by Arti Srivastava against a January 31, 2014 order of the Assistant Controller of Patents rejecting its patent titled Method and System for Detecting Counterfeit Products. The application had been filed on August 3, 2006.

The invention broadly related to counterfeit detection mechanisms and proposed a system under which product labels would carry two alphanumeric codes, one visible to the buyer and another hidden beneath a scratchable coating. T

he visible code was meant to identify the manufacturer and product, while the hidden code was intended to identify the specific product.

Under the proposed mechanism, a buyer would first send the visible code to a data centre through communication channels such as telephone, SMS, email, or internet.

If the code matched the data center's records, the buyer would then be prompted to send the hidden code after scratching off the coating. If both matched, the data centre would confirm that the product was genuine. If not, it would inform the buyer that authenticity could not be confirmed.

The application claimed this offered a simple solution for ordinary consumers, unlike existing anti-counterfeiting measures such as holograms, lab testing, or smart tags, which required specialised tools or infrastructure.

The Patent Office had rejected the application on two grounds: lack of inventive step under Section 2(1)(ja) of the Patents Act and insufficiency of disclosure under Section 10(4)(a).

Before the High Court, Srivastava argued that the Patent Office had wrongly ignored the invention's core novelty, namely the use of two simultaneous codes on the same product label, one visible and one hidden beneath a scratchable coating. Counsel argued that this feature was absent from the cited prior art.

It was also argued that the complete specification, read with the figures and flow charts, adequately disclosed how the invention would operate, including communication modes, code verification, and authentication.

Srivastava contended that once the inventive concept of dual codes was disclosed, the downstream implementation details would be obvious to a person skilled in the art and need not be elaborately set out.

The Patent Office, however, ultimately did not press the inventive step objection before the High Court and defended the rejection solely on insufficiency of disclosure.

The respondent argued that while the application referred to system components such as a receiver, processor, and transmitter, it did not explain the internal architecture or workings of those components. It submitted that the application failed to disclose how transmitted user inputs would be converted into digital form, how authenticity checks would be carried out, how responses would be generated and transmitted back to users, or what components and circuitry would make the system function.

On the inventive step, the court found that the Patent Office's original reasoning could not survive scrutiny. The primary prior art document, D1, had been published on August 10, 2006, a week after Srivastava's application was filed on August 3, 2006. Since D1 post-dated the application, the court held it could not legally be cited against the invention. As D1 formed the foundation of the inventive step rejection, that objection failed.

However, the court agreed with the Patent Office on insufficiency of disclosure.

Justice Gedela observed that although the specification identified communication channels through which users could send codes, it failed to explain essential implementation details required to make the invention operational. The court noted that implementation details such as uniform processing, error handling, security, output protocols, delivery mechanisms, system architecture, and workflow had not been disclosed.

The judgment also found that the complete specification did not explain how the visible and hidden codes would be generated, how metadata linkage would function, or what encryption safeguards would be used.

The court further noted that although the application claimed that the data centre would maintain records to detect repeated or suspicious use of the same codes, it failed to explain how such processed information would be stored or used to prevent misuse.

“It is indeed imperative to examine whether the CS fulfils the requirement of section 10(4)(a) of the Act,” the court said.

“From the CS, the amended claims, the Figures and Flow Chart it is apparent that the codes can be transmitted in one of the modes as provided (voice/fax/sms/mms/email/internet) to the Data Centre and the response received by the User by similar modes, however how the Data Centre is to process the information, having regard to the fact that it would be a digital information, is unknown and not specified. .”

The court also found an additional defect under Section 10(5). Claim 1 referred to a “transmitter” to report results and a “processor” to verify and match received product codes, but the complete specification contained no disclosure explaining those claimed components.

Because of this mismatch between the claims and the disclosed invention, the court held the application was independently barred under Section 10(5), which requires patent claims to be fairly based on the matter disclosed in the specification.

Relying on the Bombay High Court's 1968 ruling in Farbwerke Hoechst v. Unichem Laboratories, the court reiterated that a patent specification must describe an embodiment sufficiently clearly for a skilled person to implement the invention without making further inventions, and the description must not be unnecessarily difficult to follow.

Applying those principles, the court concluded that Srivastava's application suffered from “insufficiency of disclosure” and “lack of adequate direction provided by the inventor.”