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Introduction
In a significant judgment delivered on 1 July 2025, in Dong Yang PC, Inc. v. Controller of Patents and Designs, C.A. (COMM.IPD-PAT) 60/2024, the Delhi High Court reaffirmed a vital principle of patent law: even simple innovations deserve patent protection if they demonstrate technical advancement and are not obvious to a person skilled in the art. The case concerned the rejection of a Korean company’s patent application for a “Vertical Rotary Parking System” on the grounds of lacking inventive step.
The Court ruled in favour of Dong Yang PC, Inc., holding that the Controller of Patents erred in dismissing the application as a mere workshop modification. The Court underscored that simplicity, if accompanied by ingenuity and technical benefit, is no disqualification under Section 2(1)(ja) of the Patents Act, 1970.
Facts of the Case
Dong Yang PC, Inc. filed Indian Patent Application on 29 August 2013 for a “Vertical Rotary Parking System.” The system was designed to address urban parking challenges by efficiently accommodating vehicles in limited space. Following publication under Section 11A, the application was examined, and a First Examination Report (FER) was issued in 2018 under Sections 12 and 13.
In June 2019, M/s Parkerbot India Pvt. Ltd. filed a pre-grant opposition. While the company responded with evidence in May 2023, a new prior art ( D-5), a 2003 Korean patent also owned by Dong Yang PC, was introduced by the opponent just before the scheduled hearing in November 2023.
During the hearing, Dong Yang PC filed a request to amend the specification under Form-13, citing D-5 as prior art and explaining improvements, including reduced noise and enhanced safety. However, the Controller, by order dated 12 April 2024 under Section 15, rejected the application, finding the invention lacking in inventive step and refused the amendment.
Submissions by Dong Yang PC
Dong Yang PC argued that the new invention offered significant technical improvements over D-5. They contended that the invention addressed real-world problems of vibration, structural instability, and safety risks present in D-5. The company also emphasised that it voluntarily disclosed D-5 and sought to amend the specification accordingly, a right denied by the Controller without adequate justification. Relying on global practice, Dong Yang PC argued that even if a change appears simple, it can still be non-obvious if it delivers a significant technical benefit.
Submissions by the Controller
The Controller maintained that the modification was nothing more than a reversal of male and female coupling elements a routine variation not involving inventive effort.
The Controller asserted that such a change was within the common general knowledge of a skilled person and did not warrant patent protection. The Controller also rejected the Form-13 amendment, claiming it introduced technical advancements not originally disclosed.
Reliance was placed on Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, to argue that predictable modifications of known mechanisms are not patentable.
Decision of the Delhi High Court
- Simplicity is Not a Disqualification
The Court rejected the argument that simplicity undermines patentability. Quoting the House of Lords in Vickers v. Siddell (1890), the Court observed that simple inventions can be deceptive in appearance, and their real merit lies in solving complex problems elegantly.
The Court also cited Pope Appliance Corp. v. Spanish River Pulp & Paper Mills Ltd. (1929), holding that an invention’s simplicity does not detract from its ingenuity or technical value.
- Inventive Step Not Properly Assessed
The Court found that the Controller failed to provide substantive reasoning as to why the modification was obvious, offered no supporting material to justify reliance on “common general knowledge,” and overlooked the significant ten-year gap between D-5 and the present application reasoning that if the invention were truly obvious, similar improvements would likely have been made by others during that period, as highlighted in Avery Dennison Corporation v. Controller of Patents and Designs,2022 SCC OnLine Del 3659.
The Court also cited AGFA NV v. Assistant Controller of Patents and Designs, 2023 SCC OnLine Del 3493, reiterating the need for evidence when invoking general knowledge.
- Violation of Natural Justice
The Court ruled that the refusal to allow the amendment violated principles of natural justice. D-5 was introduced late in the process, and the applicant’s effort to respond via amendment under Section 57–59 of the Patents Act was denied without due consideration.
The judgment relied on Opentv Inc. v. Controller of Patents and Designs, 2023 SCC OnLine Del 2771, to hold that the High Court in appeal retains the same powers to permit amendments as the Controller.
- Post-Filing Evidence Admissible
The Court accepted Dong Yang PC’s post-filing stress analysis reports to assess technical advancement, relying on U.S. decisions in Knoll Pharmaceutical Co. v. Teva Pharmaceuticals and Genetics Institute, LLC v. Novartis. The Court clarified that while post-filing data cannot establish novelty, it can demonstrate inventive step.
The Controller’s reliance on Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries was rejected as factually misplaced, as that case involved a claimed invention that had already been publicly known and used prior to the patent application—unlike in the present matter, where there was no evidence of prior public use or disclosure of the claimed invention, making the comparison inapposite.
Final Decision
The High Court set aside the Controller’s rejection order dated 12 April 2024, directed that the patent application be restored to its original number, ordered a fresh hearing before a different officer, mandated completion of the process within four months, and instructed the Controller to decide the matter afresh, uninfluenced by the earlier order.
Conclusion
The Dong Yang PC judgment is a major reiteration that Indian patent law recognises the merit of innovations even if they appear deceptively simple.
The High Court set aside the Controller’s rejection order dated 12 April 2024, directed the restoration of the patent application to its original number, ordered that a fresh hearing be conducted by a different officer, mandated that the process be completed within four months, and instructed the Controller to decide the matter independently, without being influenced by the previous order.
The case aligns Indian jurisprudence with international principles, encouraging inventors to pursue protection for real-world innovations. For patent applicants, the decision serves as a valuable precedent on how to structure responses, amendments, and technical evidence when inventive step objections arise.
