TMPatentAllowed 11 August 2023
Microsoft Technology Licensing, LLC v. The Assistant Controller of Patents And Designs
2023:DHC:6053
- Court
- Delhi High Court
- Bench
- Sanjeev Narula, J.
- Outcome
- Allowed
- Date of judgment
- 11/8/2023
Statutory provisions
Section 16(1), Patents Act 1970 — Divisional applicationsSection 16(3), Patents Act 1970 — Divisional applicationsSection 3(k), Patents Act 1970 — Non-patentability of computer programs "per se"Section 117A, Patents Act 1970 — AppealsSection 15, Patents Act 1970 — Power of Controller to refuse applicationsSection 10(5), Patents Act 1970 — Unity of inventionSection 59(1), Patents Act 1970 — Amendments to applications
Key issue
Can a divisional patent application, derived from an earlier parent application, be rejected if its claims, while similar in subject matter, present a distinct inventive concept (method vs. system) and if the rejection under Section 3(k) lacks proper justification?
Summary
Microsoft Technology Licensing filed a divisional patent application for an invention related to advanced video compression. The Assistant Controller of Patents rejected this application, claiming it was not a distinct invention from the parent application and also fell under the non-patentable category of a computer program "per se". The court found that the claims in the divisional application were indeed distinct, focusing on a system while the parent focused on a method, and that the Controller's reasoning for rejection was insufficient. Consequently, the court quashed the rejection order and directed a re-examination of the application.
Result: The appeal was allowed; the impugned order rejecting the divisional patent application was set aside, and the matter was remanded for re-examination concerning Section 3(k).
Tags
#divisional application#patentability#Section 3(k)
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