The Delhi High Court in Dong Yang PC, Inc. v. Controller of Patents & Designs [C.A. (COMM.IPD-PAT) 60/2024], on 1 July 2025, considered an appeal under Section 117A against a Section 15 refusal of 2554/DEL/2013 (“Vertical Rotary Parking System”). A pre-grant opposition filed against the application had cited documents D-1 to D-4, and shortly before the hearing, an additional prior art document, D-5, was introduced. In response, the applicant filed Form-13 seeking to amend the application in reliance on Sections 57-59. The Controller, however, rejected the proposed amendments and refused the application on the ground that the claimed invention lacked inventive step under Section 2(1)(ja), describing the claimed features as no more than a “mere workshop modification.”
On appeal, the Court found that the conclusion on obviousness was inadequately reasoned. The impugned order did not identify what aspect of “common general knowledge” would have led a person skilled in the art from D-5 to the claimed configuration. The Court underscored that simplicity by itself does not defeat patentability, noting that even straightforward re-configurations may amount to inventions if they achieve a demonstrable technical effect. The record, in fact, showed a re-arrangement of coupling elements and articulated advantages over D-5, but the Controller had failed to connect these features with the prior art or with any properly supported notion of common general knowledge. The absence of such reasoning was held insufficient to sustain a finding of lack of inventive step.
The Court also addressed the Controller’s refusal to entertain the amendment sought by the applicant. It observed that the Patents Act contains no absolute bar against permitting amendments at a later stage so long as the conditions of Section 59 are satisfied. Amendments that remain within the scope of the original disclosure and claims, particularly those introduced to explain or narrow in response to prior art, are permissible. In the present case, the applicant’s attempt to address D-5 through amendment could not have been rejected outright, and refusal to allow such an amendment was found unjustified.
The High Court accordingly set aside the impugned order and remanded the matter for fresh consideration by a different Controller, with a direction that the application be examined de novo and decided uninfluenced by the earlier order. The judgment offers valuable clarification for patent practice: that simple technical modifications are not to be dismissed as obvious merely because of their simplicity; that reliance on common general knowledge must be specifically reasoned and evidenced; and that amendments which explain or narrow claims can be permitted under Section 59, even if sought at a later stage, provided they remain within the original disclosure.
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Contributor to present post is Abhilasha Niroola.
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