Background
In Mahesh Gupta v Assistant Controller of Patents and Designs, the Delhi High Court affirmed the refusal order issued by Assistant Controller of Patents and Designs (“Respondent”) against a patent application filed for “Portable Vehicle Management System”(“Subject Patent”). The Respondent refused the patent application on the grounds that it did not meet the inventive step requirement under Section 2(1)(ja) of the Indian Patent Act, 1970, and failed to qualify as an invention under Section 2(1)(j) of the Act.
Contentions of the Appellant
The Appellant argued that the Respondent had failed to consider the widely accepted tests for assessing the inventive step of the subject matter along with the “Manual of Patent Office Practice and Procedure”. Further, the primary feature of the invention was its portability, which the Respondent had failed to consider. They further argued that the Respondent had failed to establish the standard of a Person Having Ordinary Skill in the Art (“PHOSITA”) for the invention and evaluated the prior arts from the prospective of a highly skilled and innovative researcher.
According to the Appellant, the Subject Patent application enabled a vehicle owner to monitor the vehicle’s operation remotely, a problem which none of the prior arts had addressed. The prior arts had focused on warning nearby drivers of reckless driving or assessing the risk associated with operating a portable device while driving. Further, the Respondent’s opinion that the invention was obvious, based on the combined reading of D4 and D5, was never conveyed to the Appellant and they were not given a fair opportunity to respond, violating the principles of natural justice and the provisions of the Patents Act. Lastly, the Appellant argued that the Respondent’s analysis suffered from hindsight bias and cited the Hoffmann-La Roche Ltd & Anr. v. Cipla Ltd and Enercon (India) Limited v. Aloys Wobben in relation to the test laid down for hindsight bias.
Analysis
The main question the Court had to consider was whether the claims of the Subject Patent exhibited an inventive step, in light of the teachings of prior art documents D4 and D5, independently or cumulatively. The Subject Patent application dealt with a portable vehicle tracker designed to monitor the operations and conditions within a vehicle. The device was equipped with a connection port that allowed being powered by the vehicle’s power source and included a rechargeable battery to maintain operations. The Court went on to identify the key components and functionalities of the Subject Patent, which included a connection port, rechargeable battery, sensors, processor and processing module, anomaly determining module, alert generating module, transmitters, emergency switch, front camera, real-time assistance information, and face masking in videos.
The Court compared the technical advancements of the Subject Patent with the technical features of the cited prior arts D4 and D5 and held that the subject invention did not disclose any technical advancements over the prior art documents. The core functionalities and features claimed in the Subject Patent were already covered comprehensively by the disclosures in D4 and D5. The Court concluded the same based on the following pointers:
- Real-Time Monitoring: Both the prior arts described systems for real-time monitoring of vehicle operations using various sensors.
- Anomaly Detection: Anomaly detection based on predefined thresholds was addressed in both the prior arts.
- Alert Generation: Alert generation in various formats was covered by both D4 and D5.
- Emergency Response: Both prior arts had functionalities that contributed to emergency notification and response mechanism.
- Integration of Sensors: Both prior arts discussed the integration of multiple sensors and processing modules.
- Real-Time Assistance: D5 explicitly discussed real-time assistance through traffic and path data analysis and D4 impliedly provided it in their monitoring systems.
- Detection and Masking of Faces: While the prior arts did not explicitly disclose the feature, the concept of face detection was well known before the priority date of the invention and used in various appliances. Applying a well-known technique to vehicle tracking systems would not constitute an inventive step.
The Court held that incorporating face detection into the vehicle tracking system to enhance privacy was an obvious step and the motivation to protect personal data would naturally lead any Person Skilled in the Art (“PSITA”) to use the technique. It held that even if it considered the minor differences between the technical features of the Subject Patent and the disclosures in the prior arts, the application would still fail to satisfy the criteria for patentability due to obviousness. The minor differences were merely incremental improvements that would be obvious to a PSITA.
Further, the Court held that the practice of “mosaicking”,which entails the synthesis of multiple prior art references, is permissible only under specific conditions. Referring to the case Technograph v Mill & Rockley, the Court highlighted the need for demonstrable evidence that a PSITA, upon consulting one citation, would logically seek further insight from another citation and enhance their understanding of the initial reference for mosaicking. This practice evaluates if a PSITA could have reached the claimed invention easily and logically by integrating teachings from multiple existing technology and no inventive effort. If the same is proved, then the invention may be deemed obvious.
The Court referred to the teachings of Technograph v Mill & Rockley case in relation to mosaicking by a PSITA. Applying the same, the Court held that the teachings of D4 could be integrated seamlessly with the enhancements in D5 to reach a conclusion very similar to the Subject Patent application. It also held that the evolution claimed does not constitute a “leap” but a natural and expected progression in technological development and may be seen as an obvious step for those skilled in the art.
The Court went on to assess the doctrine of non-obviousness, a critical legal standard that prohibits the granting of patents for inventions that do not achieve a substantial level of innovation. It held that for the case, a PSITA would be someone proficient in the general practices of on-board diagnostics designing (“OBD”) and up to date with the latest development in OBD for vehicles. Given the technical features of D4 and D5 and common general knowledge, it would be a logical progression for a PSITA to reach the claimed inventions and thus the Subject Patent does not include an inventive step but a predictable refinement of existing technologies. Further, the Court stated, that the PSITA would be motivated to reach the claimed invention, as it would address the needs and problems of the industry.
Lastly, the Court referred to hindsight bias and how it leads to the erroneous inclination towards seeing events as being predictable only after their occurrence. To counter this bias, it is necessary to consider the prior arts from the perspective of a PSITA at the time of the invention, without any knowledge of the subsequent inventions. The Court held that both D4 and D5 provide a clear roadmap leading to the claimed invention and hindsight bias had no role to play.
The Court concluded that the claimed invention lacked an inventive step and that the features of portability, comprehensive monitoring, and anomaly detection are either disclosed in or could be inferred from the prior arts. Thus, the Court upheld the decision to reject the Subject Patent application due to lack of any inventive step under Section 2(1)(ja).
