Decided on: 24th December, 2025
Coram: Justice Manmeet Pritam Singh Arora
Citation: (C.A.(COMM.IPD-PAT) 465/2022)
Introduction
Addressing the patentability criteria under the Indian Patents Act, 1970, the Delhi High Court set aside an order passed by the Indian Patent Office, rejecting the grant of patent to EmitecGesellschaft für Emissionstechnologie mbH (“Emitec”) for their automotive emission control technology. The Court believed that the Patent Office had failed to examine the application in fairness as it had not adhered to the legal test mandatory for assessing the inventive steps in a patent application, i.e., the “five-step test for inventive step” developed in the F. Hoffmann-La Roche Ltd. v. Cipla Ltde . judgement and consistently followed by Indian courts thereafter.
Facts of the Case
Emitec, a Germany-based automotive emissions technologies company, had filed a patent application for an invention titled “Tank Assembly and Metering System for a Reducing Agent”. The device, a specialized tank assembly, has been designed to inject a reducing agent into vehicle exhaust systems aiming to reduce harmful emissions.
An international application was filed by Emitec in September 2010 and thereafter entered the Indian national phase in 2012. In March, 2022, the Patent Office rejected the application stating in the First Examination Report (“FER”) that the invention lacked inventive step under Section 2(1)(ja) and insufficient disclosure under Section 10, citing prior art documents D1 to D3, therefore, was obvious in light of prior art. The Patent Office concluded that prominent features of the claimed invention were derivable through routine modifications by a person skilled in the art
Emitec was dissatisfied with the rejection of the Patent Application; and appealed to the Delhi High Court under Section 117A of the Patents Act, 1970. Emitec argued that the order passed by the Patent Office was legally unsound, procedurally flawed, and devoid of a proper legal framework for assessing inventive step. Emitec argued that the Patent Office had failed to apply the mandatory five-step test for inventive step assessment laid down in F. Hoffmannjudgement, a leading precedent in Indian patent jurisprudence. The test primary sets forth the following grounds of inventiveness –
- Identifying the ordinary person skilled in the art.
- Pinpointing the inventive concept in the patent.
- Imputing common general knowledge at the priority date to that skilled person.
- Noting differences between cited matter and the invention, assessing if they involve mere routine steps.
- Deciding, without hindsight, if those differences would be obvious to the skilled person.
In their appeal, Emitec argued that their claims were indeed lovel and inventive as combining the disparate arts specified in their claims required impermissible hindsight. Emitec claimed that their invention represented a non-obvious leap, enabling complete agent evacuation and simplifying design without suction challenges.
The Patent Office responded that around 16 claims in the patent application added no novel features, merely elaborating obvious designs and the modifications being claimed involved no inventive step, just predictable adaptations for efficiency. The Patent Office also stated that the overall patent application mirrored European examinations of the corresponding application; and was insufficient for registration under the Indian Patents Regime.
Final Judgement
After carefully reviewing the matter and examining the submissions of both parties, the Delhi High Court held that the refusal order passed by the Patent Office failed at the threshold stage. The court believed that Emitec’s pleadings were justified, and the Patent Office had indeed failed to assess the inventive step in consonance with the five-step test laid down in F. Hoffmann judgement, a legal standard followed by courts consistently to ensure objectivity and consistency in patent examinations.
The Court was of the opinion that the Patent Office had not identified the inventive concept or the technical problem sought to be solved by the invention – thereby terming their analysis legally flawed.
Emphasising on the importance of a reasoned order, the Court also categorically termed the refusal as legally unsustainable due to the mechanical comparisons made by the Patent Office with prior art in this case.
Accordingly, the Court set aside the refusal order passed by the Patent Office and remanded the matter for fresh consideration back to the Patent Office. The Court ordered for a fresh hearing to be listed in the matter so that the Patent Claims could be reconsidered in accordance with law, preferably within a period of three months of the judgement.
Conclusion
The Delhi High Court, acknowledging the seriousness of credible patent examination, elevated the bar for inventive step scrutiny by the Patent Office, ensuring that patentprotection is indeed obtained by genuine inventors and not lost due to poorly examined claims.
The Court insisting on a structured, five-step obviousness framework and reaffirmed that mere assertion of obviousness without a reasoned assessment against statutory criteria cannot sustain a rejection under Section 2(1)(ja) of the Patents Act. This ruling reinforces transparency and consistency in India’s patent system, particularly for technically complex innovations.
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