IMPORTANT ISSUE
Whether the Controller General was right in refusing a patent application on the grounds if lack of inventive step
SUMMARY
SHORT DESCRIPTION OF PATENT
A method and device was disclosed that automatically produced vocabulary entries from specified inputs acoustic data for any kind of words including special words. In particular the invention teaches a method for automatically generating vocabulary entries from input acoustic data using a number of steps including acoustic phonetic transcription and a phoneme-to-grapheme conversion.
FACTUAL MATRIX
Huawei Technologies filed patent application bearing no. 490/CHENP/2011 requesting that a patent be granted for the above invention. The Controller vide order dt. 17.03.2020 refused the patent on the grounds that it lacks inventive step and novelty in light of prior art cited. Huawei filed the present appeal under S. 117 of the Act.
SUBMISSIONS BY APPELLANT
The Ld. Controller ignored the technical aspect of the invention which is the key feature and focuses on the term “device” which according to him is the Centre of dispute. The Appellant contested that the Controller was wrong in his interpretation of Section 2(1)(j) as he ignored settled principles of law contained in case laws, the Manual of Patent Office Practice and Procedure and other material. Furthermore the detailed response submitted by Huawei to the initial objections raised were also ignored by the Controller, as per the Appellant. The Controller failed to appreciate that prior art documents D1 and D3, neither alone, nor in combination disclose the features of the amended claims of the appellant’s invention, as a whole, since features collected in bits and pieces from different prior art documents (or being known or obvious), does not render the Appellant’s invention to be obvious.
SUBMISSIONS BY RESPONDENT
The prior art documents already reveal a method to add new words to the vocabulary in speech recognition systems. Therefore, Section 2(1)(j) has not been complied with, making the application unfit for grant of patent. Held The objection regarding lack of inventive step has not been appropriately elaborated upon by the Controller. There has been no proper application of facts or law to arrive at the conclusion. Without going into details the Board made a brief reference to its previous judgement in the Pharmacyclics, LLC case to reiterate that there exists a definite procedure of determination of ‘inventive step’ and further emphasize on the need for adherence to said procedure.
Case no. OA/20/2020/PT/CHN