Court Finds Error in Assessment of Inventive Step for Absorbable Stent Patent, Citing Lack of Analysis and Application of Natural Justice Principles
In a significant development, the Delhi High Court, under Justice Jyoti Singh, has set aside the rejection of Biotyx Medical Shenzhen Co. Ltd.'s patent application for an absorbable stent. The judgment, delivered on May 19, 2026, mandates a reconsideration of the application, highlighting crucial lapses in the initial evaluation by the Assistant Controller of Patents and Design.
Biotyx Medical, a Chinese company specializing in minimally invasive medical devices, had its patent application refused due to a purported lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970. The Assistant Controller had cited prior arts D1 and D2 as reasons for the rejection, claiming the invention was obvious to a person skilled in the art.
Justice Singh's judgment underscores the failure of the Respondent to adequately analyze the inventive concept of the application in light of the prior arts. The court emphasized the necessity of a reasoned analysis, stating that the Respondent had not applied the correct test for determining inventive step. The judgment criticized the reliance on hindsight analysis and speculative reasoning, which rendered the rejection unsustainable.
The court pointed out that the principles of natural justice were not adhered to, as the Respondent failed to provide a reasoned and speaking order. The Appellant's submissions were inadequately considered, and there was no clear explanation of how the prior arts could be combined to lead a skilled person to the claimed invention.
Justice Singh referenced several precedents, including the Supreme Court's decisions on the importance of a reasoned decision-making process. The judgment highlighted that the rejection lacked an analysis of the existing knowledge and the inventive step, making it contrary to the provisions of the Patents Act.
The High Court has remanded the matter back to the Assistant Controller for a fresh consideration of the application. The court instructed that the Appellant be given an opportunity for a hearing and that a decision be made within four months. The judgment makes it clear that the court has not expressed any opinion on the merits of the case, leaving the final decision to the patent office upon proper reconsideration.
This ruling is expected to have significant implications for the assessment of inventive steps in patent applications, reinforcing the importance of thorough and reasoned analysis in line with natural justice principles.
Bottom line:-
Patent Law - Rejection of a patent application for lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970 - Held, the Respondent erred in failing to analyze the invention disclosed in the prior art, the invention disclosed in the application under consideration, and the manner in which the subject invention would be obvious to a person skilled in the art. Rejection quashed, and the matter remanded for reconsideration.
Statutory provision(s):
Sections 2(1)(ja), 15, and 117A of the Patents Act, 1970
