The North Face Apparel Corp v. Controller of Patents and Designs

High Court of Judicature at Madras | Reserved: 14 July 2026 | Pronounced: 16 October 2026 CMA(PT) No. 22 of 2025 Bench: Hon’ble Mr. Justice K. Kumaresh Babu

Background

The North Face Apparel Corp, a company of Wilmington, Delaware, USA, filed Indian Patent Application No. 202147026139 for an invention titled “Systems and Methods for End-to-End Article Management.” The Controller of Patents and Designs refused the application by an order dated 16 April 2025. The appellant challenged that order by a Civil Miscellaneous Appeal under Section 117A of the Patents Act, 1970. It prayed that the order be set aside and that the grant of the patent be directed.

The appellant’s case was that the invention relates to an integrated end-to-end process for article management. It is directed at articles such as clothing, apparel, accessories and fabric-based components, and covers a method of attribution and traceability of such articles through to the implementation of a digital marketing system. The invention seeks to address drawbacks faced by the industry by providing a comprehensive end-to-end process. That process dynamically detects and minimises discrepancies so as to produce articles within the tight tolerance of the intended design. The appellant said the invention introduces a responsive mechanism that continuously monitors and corrects deviations from the intended design parameters.

The prosecution history, as recorded in the judgment, was as follows. A First Examination Report raised objections of lack of inventive step and non-patentability. The appellant filed a detailed reply dated 31 May 2022 with amended claims. A hearing notice followed, raising objections of non-patentability, which the appellant attended, filing written submissions with further amended claims. A second hearing notice cited prior art documents, and the appellant again attended and filed written submissions with further amended claims. A third hearing notice raised further objections, which the appellant addressed on inventive step. The Controller then refused the application, relying on prior art documents D21 to D24.

The appellant’s submissions were these:

• The Controller dissected the claims into isolated features and compared them with the prior art, whereas the invention ought to have been assessed as a whole.
• None of the cited prior art uses a spectrophotometer, which is the primary sensor in the appellant’s invention.
• The Controller failed to assess the differences between the invention and the prior art.
• The invention involves continuous monitoring, which improves precision and efficiency in manufacturing.
• The invention uses invisible markers, which the prior art does not.
• The Controller had in places recorded findings in the appellant’s favour yet still concluded with a rejection.
• The claims include a bidirectional data flow architecture enabling dynamic process rectification, which is not found in D23.

The respondent’s submissions were these:

• The invention had been taken as a whole and compared with the cited documents.
• D21 and D23 disclose automated garment manufacturing and centralised control.
• D22 discloses identifier-based tracking at multiple manufacturing stages.
• D24 discloses writing process-relevant information on the product for use in subsequent production.
• The combined teaching supplied the motivation for a person skilled in the art to arrive at the claimed subject matter, so the claimed invention was a mosaicing of unrelated prior art and was hit by hindsight.
• D21 discloses an automated system for personalised custom-fit garments using a scanner to obtain a three-dimensional model, and does not itself detect and correct errors.
• D22 discloses optically readable codes and non-optical tracking devices.
• D23 discloses a centralised command and control network.
• The spectrophotometer and invisible markers could not be an inventive step because markers and sensors are used in the cited documents.

Issues for Determination

1. Whether the Controller correctly refused the application on the ground that the claimed invention lacked inventive step in view of prior art documents D21 to D24, whether through mosaicing of those documents or hindsight reconstruction.
2. Whether the Controller dissected the claimed invention into isolated features and compared them piecemeal with the cited documents, instead of assessing the invention as a whole.
3. Whether the use of a spectrophotometer to identify invisible markers in the claimed process was an inventive step as compared with the cited documents D21 to D24, and whether the Controller overlooked this aspect.
4. Whether the order of refusal dated 16 April 2025 should be set aside and the grant of the patent directed.

Key Holdings of the Court

• The Court held that the Controller had dissected the claimed invention and compared it with the cited documents, despite the respondent’s contention that the invention was assessed as a whole. The Court said this was apparent from the impugned order and from the respondent’s counter affidavit. It reached that conclusion because the counter admitted the objectives of each cited document.
• The Court relied on admissions in the counter affidavit:

The objectives of D21 and the presented invention are entirely different.

• The Court held that the Controller’s refusal on the ground of mosaicing of the cited documents was not well founded. Since the objectives of the cited documents were admittedly wholly different, their teachings could not be used as a hindsight reconstruction of the claimed invention. The counter itself sufficed to show that the claimed invention had not arisen from the common general knowledge in the teachings of the cited documents.
• The Court held that the invention uses a new method of tracking the manufacturing process by using invisible markers. None of the cited documents disclosed teachings that, even when read in combination as the respondent alleged, had any correlation with the claims of the invention. Even if there was a semblance of the teachings when taken independently, the invention involved an inventive step and was capable of industrial application. Stating that an inventive step involves a technical advance as compared to existing knowledge, or economic significance, or both, the Court held that the claimed process, which identifies garments using a spectrophotometer that identifies invisible markers, is essentially an inventive step when compared with D21 to D24. This aspect had been overlooked by the Controller.
• The Court held that the order of refusal was wholly unsustainable. The appeal was allowed and the order of refusal dated 16 April 2025 was set aside. The Court directed the respondent to grant the patent on Indian Patent Application No. 202147026139. There was no order as to costs.

Statutory Provisions Involved

Section 117A of the Patents Act, 1970 confers a right of appeal to the High Court against specified orders of the Controller. The appeal was filed under this provision against the Controller’s order refusing the application, and the Madras High Court exercised appellate jurisdiction accordingly.

The judgment does not cite any other statutory provision by section number. It speaks of lack of inventive step and non-patentability as the objections in the First Examination Report and hearing notices. It describes an inventive step as involving a technical advance as compared to existing knowledge, or having economic significance, or both. It also refers to capability of industrial application. The judgment does not specify which clause of Section 3 the non-patentability objections invoked, and it does not cite Section 2(1)(ja) by number. This summary therefore attributes no further provisions to the Court.

Reasoning of the Court

The judgment is short and its reasoning is compact.

The Court began from the respondent’s own pleading. The respondent’s counsel contended that the invention had been taken as a whole and compared with the combined teaching of D21 to D24. The Court found otherwise from the impugned order and the counter affidavit. The counter set out the objective of each cited document and admitted that those objectives differ from that of the claimed invention. The Court treated this as showing that the claim had been dissected and compared with isolated teachings.

The Court then went through the cited documents using the respondent’s own admissions. D21 concerns automated production of a personalised custom-fit garment using a scanner to obtain a three-dimensional model of the customer’s body, and it does not detect errors or discrepancies. D22 concerns optically readable codes, whereas the invention uses invisible markers. D23 has a different objective, and although its teachings relate directly to end-to-end article management architecture, its steps are not those of the claimed invention. D24 could not be decisive for a combined analysis of D21 to D24.

On that footing the Court held that the Controller’s reliance on mosaicing was unfounded. Documents whose objectives were admittedly different could not be combined as a hindsight reconstruction of the invention. The Court then looked at the invention itself. It found that the claimed process tracks the manufacturing process by identifying garments with a spectrophotometer that detects invisible markers. No cited document, alone or combined, taught this or correlated with the claims. The Court characterised this as an inventive step with industrial application and said the Controller had overlooked it. Having found the refusal wholly unsustainable, the Court set it aside and directed grant of the patent.

Doctrinal Significance

The judgment is brief and fact-driven, and its significance should be read narrowly.

Its practical significance lies in two features. First, the Court reached its conclusion largely by holding the respondent to admissions in its own counter affidavit about the differing objectives and teachings of D21 to D24. It then treated those admissions as defeating the allegation of mosaicing and hindsight. Second, the Court did not remand the matter for fresh examination, as many Delhi High Court decisions on the Controller’s orders have done. It directed the grant of the patent itself.

The judgment does not formulate a new test for inventive step, and it cites no precedent for the principles on mosaicing, hindsight or whole-claim assessment. It does not discuss the non-patentability objection raised in the hearing notices, and it does not say whether that objection was independently pressed in the impugned order. It also does not analyse the claims or the specification in detail. Any account that attributes a broader doctrinal framework to the case goes beyond what the judgment decides.

Compulsory Licensing Copyright Act Copyright Act 1957 copyright case laws Copyright Enforcement Copyright Infringement Copyright Law Copyright Rules Descriptive Marks India Indian IP Framework Indian Patent Law Indian Trademark Law Intellectual Property Law IP Law India Patent Claims Patent Enforcement Patent Infringement Patent law Patent Revocation Patents Act Patents Act 1970 Pharmaceutical Patents Section 9 Trade Marks Act Section 29 The Patent Act 1970 Trademark Infringement Trademark Registration Trade Marks Act 1999 Trade Marks Rules 2017 TRIPS Compliance