Summary
The Delhi High Court overturned the Controller's rejection of a patent for a Vertical Rotary Parking System, holding that conclusions on inventive step must be evidence-based rather than driven by assumptions or vague references to "common general knowledge."
Background
Dong Yang PC, Inc., a Korean manufacturer, filed Indian Patent Application 2554/DEL/2013 for a "Vertical Rotary Parking System" designed to optimize urban parking through vertical storage in a rotating structure. Parkerbot India filed pre-grant opposition citing prior art documents D1-D4. Later, additional prior art D5 (KR200326138Y1) — an earlier Korean patent owned by Dong Yang itself — was introduced.
The Controller rejected the application for lack of inventive step over D5, refusing to allow voluntary amendments that distinguished the invention from D5. The Controller relied on "common general knowledge" to assert that the modification was obvious without citing specific evidence.
Key Issues
1. Inventive Step Over Own Prior Art: The Court found the Controller failed to provide evidence or authoritative sources supporting the claim of obviousness. The decade-long gap between D5 (2003) and the present application (2013) supported non-obviousness.
2. Evidence-Based Assessment: The Court emphasized that assertions of "obviousness" must be substantiated with concrete reasoning or evidence. Generalized references to "common general knowledge" without specific sources are insufficient to deny inventive step.
3. Right to Amend: The Court held that when previously undisclosed prior art comes to light during examination, applicants have the right to amend specifications under Section 59 to distinguish the new prior art, and such amendments must be considered on merits.
Technical Advancement
The invention replaced female portions of the suspension chain (as in D5) with male portions, resulting in smoother motion, reduced friction, fewer contact points, lower noise levels, and enhanced safety. The Court found these improvements were not obvious workshop modifications.
Decision
The appeal was allowed, the Controller's rejection set aside, and the case remanded for de novo consideration with directions that:
- Simple but novel and non-obvious inventions warrant patent protection
- Inventive step assessment must be evidence-based, not assumption-driven
- The right to amend specifications must be preserved when amendments are legally permissible
Significance
This judgment reinforces that patent examination must be grounded in evidence rather than speculation. It protects applicants from rejection based on unsupported assertions of obviousness and affirms the importance of amendment rights during prosecution.