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Google LLC vs. The Controller of Patents


The Delhi High Court recently dismissed an appeal filed by Google LLC (“Google”) against the Controller of Patent (“Controller”) order refusing Google’s patent application on the grounds that the invention lacks novelty and inventive step.

The Controller examined Google’s application for grant of a patent on ‘Managing Instant Messaging Sessions on Multiple Devices’, had raised an objection to its patentability in the First Examination Report on the grounds that, the invention, being a computer programme per se, lacks novelty and inventive step.

Google made amendments to the claims to address the objections and further claimed that none of the cited prior arts disclosed the invention and its technical effects. Additionally, Google stated that corresponding foreign patent applications have been granted in the US and Canada. A hearing was then scheduled in this matter and the Controller disagreed with Google’s submissions, and eventually refused the application on the grounds raised in the FER.

The Court, in the appeal filed by Google, applied the settled tests for inventiveness and upheld the Controller’s refusal order. The Court also noted that, while, during the appeal proceedings, Google submitted that, a corresponding application for the subject patent in Europe had been abandoned, the Court’s own finding revealed that, the corresponding application was in fact, refused on the grounds of lack of inventive step.

The Court ruled that the Appellant in the present appeal not only presented wrong facts to the Court, but also failed to disclose the information regarding the refusal of the European patent applications, and accordingly, the appeal was dismissed with INR 1 lakh costs for presenting wrong facts.

Google LLC vs. The Controller of Patents, [C.A.(COMM.IPD-PAT) 395/2022, Delhi High Court judgment dated, 2nd April, 2024]

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