INTRODUCTION

The gap between promoting innovation and the doctrine that not everything that is invented warrants protection is filled by patent law. It gives newness yet excludes unoriginal thoughts from the public domain. Recently, these principles were addressed by the case Mahesh Gupta vs. Assistant Controller of Patents and Designs (hereinafter referred as the said case). The patent application deals with "Portable Vehicle Management System" called PVMS, intended to monitor and manage vehicles in real time.

It held that the PVMS patent was not accepted, and it does not perform an inventive step as defined under Section 2(1) (ja) of the Indian Patent Act, 1970.

This case raises some critical issues about the inventive step in judgment on an invention, role of prior art, and doctrine of non-obviousness. It also elaborates questions about the perspective that ought to be adopted in patent assessment and questions on "mosaicking" of prior art references as well as bias issues related to hindsight. In this blog, we'll take a closer look at just how this case legally and technically impacts future patent applications, especially in technology and vehicle management systems.

WHAT IS PVMS?

A PVMS is technology that would allow one to track and keep close eyes on their vehicles, location-in- real time, remote, and through such equipment as those that are portable. Users, whether owners or fleet managers, can track their vehicle's location, perform remote diagnostics, manage routes, and pull emergency alerts from the system. PVMS integrated all the aspects of GPS, safety features, and diagnostic tools, giving flexibility for personal as well as commercial use, offering improved vehicle security and efficient working operations for industries like logistics. If it were patented, it would have transformed the practice in the management of vehicles.

UNDERSTANDING PATENTS AND PATENT ELIGIBILITY

At bottom, a patent is a legal privilege granted by the government which allows the inventor to exclude others from making, using, or selling the invention for a limited time-most often 20 years. To be patentable, an invention must satisfy the statutory criteria set out in the relevant patent laws, all of which require that:

1. It must be original: a novelty that is, which means it cannot have been published before.

2. Non-obvious: It must not be obvious (or a so-called "obvious to try"); it cannot simply be new or an exercise in the design of already-known technology.

3. Functional: It must be used for something since it provides a practical function.

4. Patentable Subject Matter: In the U.S., for instance, the invention should not belong to classes considered non-patentable such as abstract ideas, natural phenomena or laws of nature.

In the case of the PVMS, it must make an investigation of why the patent office probably declared that the system failed to satisfy these requirements.

BACKGROUND OF THE CASE

In the said case, the Delhi High Court upheld the order by which an assistant controller refused a patent application for "Portable Vehicle Management System". The assistant controller, Respondent herein, had rejected the application inter alia on that ground as it did not meet one of patentability criteria related to inventive step required under Section 2(1)(ja) and was also held a non-invention within the meaning assigned thereto by section 2(1)(j).

ARGUMENTS OF THE APPELLANT

The Appellant submits that the Respondent has altogether failed to apply, in appropriate terms, the established tests for the determination of inventive steps as laid down in the "Manual of Patent Office Practice and Procedure." Judgment fails to consider a most important feature of the invention, portability. It is submitted that the judgment fails to appreciate the invention from the point of view of a Person Having Ordinary Skill in the Art (PHOSITA) but uses the viewpoint of an expert researcher.

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Subject Patent intended to solve the specific problem as this invention was described as unique by the Appellant, in that vehicle owners could have an idea about how their vehicle is performing from a distance wherein the prior art did not offer. The prior art was more concerned with issues such as alerting other drivers in close proximity to instances of reckless driving or the dangers posed by using portable devices whilst driving. Moreover, the Appellant submitted that the Respondent found obviousness on a combined reading of the prior art documents is never communicated and hence no opportunity to respond thereby denying natural justice and the Patents Act. Lastly, the Appellant submits that the Respondent's order is vitiated with hindsight bias, and the judicious use of relevant cases has been cited as Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd. and Enercon (India) Limited v. Aloys Wobben.

ANALYSIS

The court of Appeal's significant decision would be whether the Subject Patent has an inventive step in relation to prior art D4 and D5. The Application was for vehicle tracker that is transportable regarding tracking and monitoring the operations and conditions of the vehicle. The device consisted of a power source extracted from the power of a vehicle, rechargeable battery, sensors, and modules for anomaly detection and generation of alerts. It also included an emergency switch, a front camera, information on real-time assistance, and video recording with facial masking for private purposes.

On comparing D4 and D5 with the Subject Patent, the Court observed that these core features are already known in the prior art that encompass real-time monitoring, anomaly detection, and alert generation. Furthermore, it was observed by the Court that facial detection added to enhance the privacy aspect is known art pre-dating the claimed invention's priority date, and the simple application of such known art to a vehicle tracking system would not amount to an inventive step.

The Court ruled that even the minor variations of the Subject Patent from the prior art were incremental improvements that would be obvious to a PHOSITA. The use of "mosaicking," or synthesizing multiple prior art references, was permissible and the learning of D4 and D5 could logically be combined to come to a similar conclusion as did the Subject Patent. The invented thing was not landmark but something that would seem logical after the technology had been developed.

The Court held that the doctrine of non-obviousness whereby PHOSITA with a background in on-board diagnostic (OBD) systems, certainly would have developed the claimed invention since the characteristics of D4 and D5 explained the invention. It also held that the Subject Patent contained no inventive step but an exposition of known technologies.

Holding on this note, the Court rejected the argument of hindsight bias holding that D4 and D5, when combined provided a clear roadmap to the invention in suit without any influence of hindsight.

CONCLUSION

Held that the Subject Patent was rightly rejected under the grounds that the Subject Patent did not contain an inventive step as Section 2(1)(ja) of the Indian Patent Act, 1970. The features of portability, comprehensive monitoring, and anomaly detection either were known from prior art or could be worked out from prior art. Thereby, the Subject Patent did not have any novelty due to obviousness.

Author : Prerna Tayal, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

REFERENCES

1. Author – Swati Sharma, Gitika Suri & Sandeep Pandey, Portable Vehicle Management System Denied Patent, Cyril Amarchand Mangaldas, Date of Publication – August 12, 2024.

https://corporate.cyrilamarchandblogs.com/2024/08/portable-vehicle-management-system-denied-patent/#:~:text=The%20Court%20concluded%20that%20the,inferred%20from%20the%20prior%20arts.

2. Patent on Portable Vehicle Management System goes off track, Banana IP Counsels, Date of Publication – July 9, 2024

https://www.bananaip.com/patent-on-portable-vehicle-management-system-goes-offtrack/

3. Author – Arunima, Delhi High Court upholds refusal of patent for Portable Vehicle Management System due to lack of novelty, SCC ONLINE, Date of Publication – 13 June, 2024.

https://www.scconline.com/blog/post/2024/06/13/delhi-high-court-upholds-refusal-portable-vehicle-management-system-absence-novelty-legal-news/

4. Mahesh Gupta v. Assistant Controller of Patents, 2024 SCC OnLine Del 4000