Section 10(5) of The Patents Act, 1970, requires the claim or claims of a complete specification shall be clear and succinct. More often than not, examiners of the Indian Patent Office cite lack of succinctness under the objections on clarity and conciseness of claims. However, there is a dearth of understanding the term ‘succinctness’ as neither the Act, nor the Manual of Patent Office, gives any clear guidance on what constitutes succinctness or how to identify lack of succinctness.
A current ruling dated 2 June 2023 from the Delhi High Court identified the above issue while throwing some light on how to define succinctness, based on the case laws and foreign (Australian) patent manual.
The said ruling also gives some essential inputs upon examining inventive steps of an invention over the common general knowledge.
BRIEF FACTS OF THE CASE
1. The application was filed by AGFA NV & ANR on 08th July, 2016 for an invention on MANUFACTURING OF DECORATIVE LAMINATES BY INKJET. The application was a national phase of International application PCT/EP/2015/052030.
2. The First Examination Report was issued on 27 April 2019 citing objections on Novelty [Sec 2(1)(j)], Inventive Steps [Sec 2(1)(ja)] and lack of clarity and conciseness [Sec 10(4) & 10(5)], pursuant to which the applicant filed a detailed response.
3. The oral hearing was appointed which retained the objections as mentioned in the First Examination Report. Pursuant to the oral hearing, the applicant filed a written submission along with amended claims.
4. The Controller refused the application mainly on the following grounds:
a. The amended claims failed to meet the requirements under Sections 10(4)(c) and 10(5) of the Act as they were vague and the scope of claims was indefinite
b. The amended claims are not patentable in terms of Section 2(1)(ja) of the Act.
5. The decision of the Controller was appealed before the Delhi High Court, and the Hon’ble Justice Amit Bansal, J., has set aside the impugned refusal allowing the application to proceed to grant.
The basis of his decision is as follows:
Lack of clarity and succinctness in claims:
The Controller held few terms and expressions, which were used in claims as vague and indefinite. However, the Hon’ble Court rejected the ground on findings that all those terms were clearly described in the complete specification of the invention and therefore do not render the claims vague or indefinite in anyway.
Lack of succinctness:
The Manual of Patent Office Practice and Procedure refers to succinctness only in the following manner:
“Unity of invention and Clarity of claims
xxxx xxxx xxxx
b) Claims shall be clear and succinct and fairly based on the
matter disclosed in the specification.
Structure of Claims
xxxx xxxx xxxx
d) Each claim should be clear and succinct.”
In absence of definite guidance for ascertaining succinctness in the Indian Patent Office Manual, the Court made references to the Patent Manual issued by the IP Office of Australia.
Paragraph 23 of the order quotes the following from the Australian Manual:
· “an individual claim is considered unnecessarily lengthy; or
· the statement of claims as a whole is considered unnecessarily lengthy due to the repetitious nature of the claims.”
In short, a claim to be succinct, it must be specific and not repetitive or excessively wordy.
The Court also observes that the Australian Manual makes a reference to the Australian judicial precedent on the meaning or scope of the term ‘succinct’ in Doric Products Pty Ltd v Lockwood Security Products Pty Ltd,  FCA 1877.
The relevant extract of the said judgement highlighted under paragraph 25 of the order and is set out below:
“I accept that it takes patience, time and effort to unravel all
of the claims of the Patent. Subject to the expenditure of that
time and effort, there is no alleged ambiguity in the claims. The
problem is not with prolixity, but with attempted compression,
and the multitude of claims. That, however, falls short of
establishing that the claim or claims are not clear and succinct.”
Non Inventiveness based on Common General Knowledge:
The refusal on inventiveness was mainly based on a prior art (cited under document D5), which in combination with the teachings of ‘common general knowledge’, would render the invention workshop modification.
The Court has observed that the impugned order lacked any reference of the ‘common general knowledge’ or the fact as to why the persons skilled in art would apply such ‘common general knowledge’ to achieve the claimed feature.
In this regard, the Court also made a reference from the passage from Terrell on Law of Patents, 16th Edition, which specifically discussed the aspect of proof for ‘common general knowledge’. The relevant extract of the said:
“Proof of common knowledge is given by witnesses competent to speak upon the matter, who, to supplement their own recollections, may refer to standard works upon the subject which were published at the time and which were known to them. In order to establish whether something is common general knowledge, the first and most important step is to look at the sources from which the skilled addressee could acquire his information.
The publication at or before the relevant date of other documents such as patent specifications may be to some extent prima facie evidence tending to show that the statements contained in them were part of the common knowledge, but is far from complete proof, as the statements may well have been discredited or forgotten or merely ignored.” Evidence may, however, be given to prove that such statements did become part of the common knowledge.”
The Court observed that, while citing ‘common general knowledge’ as a ground for refusal of a patent application, following are the essential requirements:
· to specify the source of the said knowledge, which should publish before the priority date of the patent application.
· the fact that a theory or principal or knowledge has become common knowledge needs to be substantiated by some evidence. The evidence could be in the form of references to the ‘common general knowledge’ textbooks/ research articles/ standard documents.
Precisely, there is no requirement for the knowledge to be at the forefront of the mind of the person skilled in the art.
The Court also put its reliance upon the judgement of the UK Patents Court in Generics (UK) Ltd. v. Daiichi Pharmaceuticals Co.Ltd.,  R.P.C. 4, and the judgment of Calcutta High Court, in Groz-Beckert KG v. Union of India & Ors., 2023 LiveLaw (Cal) 17.
In the present case, the Court however, disagreed with the Controller’s decision, since it did not mention any source of the common knowledge that was considered, and therefore, it could not be construed as to what precise element of ‘common general knowledge’ in combination with the cited prior art rendered the invention devoid of inventive steps.
The decision of refusal was set aside by the Court and the appeal was allowed. The Hon’ble Court before deciding the appeal, also took a note of the fact that the invention was allowed in all the countries, like, USA, UK, Australia, China and various countries in Europe.
The decision also has a postscript, wherein the Hon’ble Court recommended that it is a need of the hour to update the Manual of Patent Office Practice and Procedure commensurate with dealing the intricate matters like objections on lack of clarity and succinctness.
The number of Patent filings in India is rapidly increasing. It is often observed that claims of a patent application, particularly involving complex inventions, like, Artificial Intelligence systems, machine learning functions, agrochemicals, pharmaceuticals and manufacturing methods, are either large in numbers, or involve a lot of features, which are interlinked to each other.
The decision would provide some guidance to the examiners in ascertaining aspects like clarity and succinctness of claims, till the manual is further updated.
Author: Dipanjana Chakraborty
For the court order, please click here