Delhi High Court - Orders
Nippon Steel Corporation vs Controller General Of Patents, Designs ... on 22 December, 2022
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~1
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-PAT) 323/2022
NIPPON STEEL CORPORATION ..... Appellant
Through: Mr. Vineet Rohilla, Advocate.
versus
CONTROLLER GENERAL OF PATENTS, DESIGNS AND
TRADEMARKS AND ANR ..... Respondents
Through: Ms. Nidhi Raman, CGSC with Ms.
Zubin Singh and Ms. Charu Modi,
Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 22.12.2022
1. Appellant's patent application bearing no. 8620/DELNP/2012 was filed on October 4, 2012, as a national phase application of PCT (Patent Cooperation Treaty), claiming priority from Japanese Patent Application no. 2010-087954 dated April 6, 2010, in respect of five claims.
2. The impugned order dated 16th March, 2020 under Section 15 of the Patents Act, 1970, rejects the application under Section 3(d) of the Patent Act, 1970 observing as follows:
"Applicant submission regarding the method for repairing an inside of a gas flue is not sufficient. If any device was made for any repairing work then repairing of that work with that device is a part of manual of operation of that device that means how to use the device. So no contribution lies in method when it is standard by operation of that device. In my opinion if device for repairing an inside of gas flue is manufactured then method of operation for repairing is fixed as manual by manufacturing industry and any body can repair that inside of gas flue by Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:22.12.2022 19:16:20 using that device and manual of use for repairing. New use of known substance /device fall under section 3 (d) of the Patent Act.".
3. The examiner has opined that if a device for repairing is being manufactured, then the method for operation thereof is only a manual which is not patentable.
4. Mr. Vineet Rohilla, counsel for Appellant, argues that method claim (1) discloses several technical steps for implementing the claimed method of repairing an inside of a gas flue, which have been completely ignored by the Examiner. He further argues that there is no discussion whatsoever on the other claims which pertain to the device itself, and refers to second claim made in the 'Complete Specification' annexed with the petition.
5. Issue notice. Ms. Nidhi Raman, CGSC for Respondents, accepts notice. Reply, if any, be filed within a period of four weeks from today.
6. The parties are directed to file their brief note of submissions, not exceeding five pages, along with relevant case law(s), in terms of IPD Rules, at least two weeks before the next date of hearing.
7. Along with the brief note, counsel shall also prepare and hand over a convenience file containing relevant pleadings, documents, and evidence on which they seek to rely upon.
8. The same shall also be handed over as well as e-mailed to the Court Master within the same timelines.
9. Re-notify on 29th May, 2023.
SANJEEV NARULA, J DECEMBER 22, 2022/as Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:22.12.2022 19:16:20