‘Patentability of Simple Innovations’ – Dong Yang Pc, Inc vs Controller Of Patents And Designs, Delhi High Court

This case is an Appeal filed under Section 117A of the Patents Act, 1970, challenging the impugned order dated 12th April 2024 passed by the Controller of Patents and Designs. The Appellant, Dong Yang, had submitted a patent application for an invention which was opposed by M/s Parkerbot, relying on prior art documents. Notably, the prior art document was shared with the Appellant only a few days before the scheduled hearing. Following this, Dong Yang submitted Form-13 seeking an amendment to the patent specification before the Patent Office.

However, through the impugned order, the Controller rejected the patent application on the grounds that the claimed invention amounted to mere alterations/ workshop modifications and predictable & common knowledge, thereby failing to meet the threshold of “inventive step” under Section 2(ja) of the Patents Act. Additionally, the Controller also refused to allow the amendment requested through Form-13.

The Delhi High Court in its judgement dated 01.07.2025, noted that the invention titled Vertical Rotary Parking System was intended to optimize vehicle parking in narrow spaces and held that the said invention was novel over the Appellant’s earlier patented system. The Appellant had submitted that the earlier system involved complex driving units comprising multiple chains, sprockets, and power transmission components, which led to significant noise due to friction. To overcome these limitations, the Appellant asserted that the present invention introduced modifications aimed at achieving a quieter and more efficient operation with reduced friction and fewer contact points. However, the Respondent had argued that the only distinction was the mechanical reversal of the male and female coupling elements between the suspension chain and pull gear and since the alteration was only mechanical in nature, it does not result in any technical improvement in the cited prior art. According to the Respondent, this alteration was obvious to a person skilled in the art and was not accompanied by any data or technical information demonstrating a performance advantage or inventive step.

In the present appeal, the Delhi High Court considered the following issues and rendered its decision accordingly-

1. Simplicity no bar to Patentability

Court cited judgements to rule that simplicity does not defeat an invention and even simple inventions are patentable. The High Court for Delhi observed that, “a simple change can introduce discernible and substantial differences, leading to a new innovation. A simple invention, if novel and non-obvious, warrants patent protection when it addresses a technical problem with ingenuity.”

2. Obvious & Predictable Knowledge

The Delhi High Court cited various cases to hold that the time gap between the prior art document and the invention under consideration is one of the factors to be considered while deciding obviousness of the invention. Furthermore the Court iterated that, “if a long time has passed and a simple change resulted in unpredictable advantages which no one had thought of for a long time, the court would tilt in favour of holding that the intention is not obvious, because if it were so obvious any third party could have made the changes.”

To rely on “common knowledge” as a ground in refusing patent application, the source of the common knowledge should be essential to be specified and be substantiated by some evidence.

It should not be held common simply because it is known to some persons in the art, but because it is generally known by the bulk engaged in the field in which the invention relates.

The invention should be considered in whole to discern obviousness and commonness.

4. Amending the specifications

Provision pertaining to amendment of application and specification are detailed in section 57 and 59 of patents act and thus there exists no bar on such amendments unless the conditions of the said provisions are not fulfilled.

Amendments are permissible as long as claims are not expanded.

5. Evidence developed at a later stage

The court cited judgments and ruled that when the inventor didn’t contemplate some result at the time patent was filed, then it wouldn’t be improper to supplement evidence of unexpected result at a later time.

Thus the Delhi High Court set aside the impugned Order of the Controller of Patents and Designs dated 12.04.2024 stating that:

1. The Order didn’t give any evidence to prove that the mere modification was of common general knowledge

2. The Controller violated the principles of natural justice by not giving the Appellant a fair opportunity to address objections by rejecting his amendment.

3. Rejection of the patent application on blatantly illogical and misconceived reasoning, namely that the invention was “too simple” to qualify as patentable was not justified.

4. The Controller of Patents and Design was directed for de novo consideration of the above application for registration of the patent and decide the matter, uninfluenced by the impugned order. It was also directed that the aforesaid exercise shall be completed within 4 months from the date of this Judgement.