Teaching In Prior Art Must Be Enabling For PSITA [Person Skilled In The Art] To Defeat A Patent
In intellectual property law, the determination of patent validity often hinges
on the concept of prior art. Prior art refers to any evidence that an invention
is already known. When assessing the novelty of an invention, one crucial factor
is whether the prior art teaches or enables a person skilled in the art (PSITA)
to create the claimed invention. This article delves into the significance of
enabling teaching within prior art as a means to invalidate a patent, with a
focus on a recent case involving Indian Patent Application No.1783/CHENP/2012.
Background of the Case:
The case in question involves the rejection of an Indian patent application
titled "Message Communication of Sensor and other Data" filed on 27 February
2012. The application claimed priority from a PCT Application dated 15 September
2010, with the original priority date being 23 September 2009. The rejection was
challenged, leading to an appeal, wherein the Hon'ble High Court overturned the
rejection order.
Analysis of the High Court's Observations:
The High Court's decision rested on a critical observation regarding the
enabling teaching within the prior art. It was noted that while the cited prior
art also dealt with the transmission of sensor data to subscribing applications,
it failed to teach or enable the conversion of raw sensor data into easily
readable messages, which was the essence of the claimed invention.
The court highlighted the distinction between merely transmitting sensor data
and converting it into easily interpretable messages. Despite similarities in
functionality, the prior art lacked explicit teachings or enabling disclosures
regarding the conversion process. This crucial disparity indicated that the
claimed invention addressed a unique problem not addressed by the prior art.
Importance of Enabling Teaching in Prior Art:
The case underscores the significance of enabling teaching within prior art as a
determinant of patent validity. Patent law requires that prior art must
sufficiently teach or enable a PSITA to create the claimed invention. Mere
disclosure of similar functionalities or elements is insufficient if it does not
provide explicit guidance or enablement for implementing the claimed invention.
The High Court's analysis reaffirms the principle that patent protection should
not extend to inventions that are obvious or readily derivable from existing
knowledge in the relevant field. Enabling teaching serves as a safeguard against
the granting of patents for incremental innovations lacking inventive step.
Challenges in Establishing Enablement:
Proving lack of enabling teaching in prior art presents challenges in patent
litigation. It requires a nuanced analysis of the disclosed content, coupled
with an understanding of the knowledge and capabilities of a PSITA at the
relevant time. Courts often rely on expert testimony and documentary evidence to
evaluate the level of enablement provided by the prior art.
In the present case, the appellant successfully demonstrated the absence of
enabling teaching in the cited prior art, thereby invalidating the rejection of
the patent application. The court's scrutiny of the prior art's content and its
comparison with the claimed invention played a pivotal role in reaching this
conclusion.
Conclusion:
The case highlights the critical role of enabling teaching within prior art in
determining patent validity. Patent protection should be reserved for inventions
that offer solutions not obvious or readily available to a PSITA based on
existing knowledge. The requirement of enabling teaching serves as a safeguard
against the grant of patents for trivial or incremental innovations.
Moving forward, patent applicants and practitioners should emphasize the
uniqueness and non-obviousness of their inventions, supported by clear and
enabling disclosures. Likewise, patent examiners and courts must rigorously
assess prior art to ensure that patent rights are granted only to deserving
inventions that significantly contribute to technological advancement.
Case Title: Microsoft Technology Licensing LLC Vs Assistant Controller of
Patents and Designs
Order Date: 28.02.2024
Case No. (OA/3/2021/PT/CHN)
Neutral Citation:2024:MHC:1009
Name of Court: Madras High Court
Name of Hon'ble Judge:Senthil Kumar Ramamoorthy, H.J.
Disclaimer:
Ideas, thoughts, views, information, discussions and interpretation expressed
herein are being shared in the public Interest. Readers' discretion is advised
as these are subject to my subjectivity and may contain human errors in
perception, interpretation and presentation of the fact and issue involved
herein.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and
Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539
Law Article in India
You May Like
Please Drop Your Comments