Lack of significant technical advancement over prior arts and Rejection of Patent
The rejection of an Indian patent application for the ‘Portable Vehicle Management System’ has sparked legal contention, with the decision rendered on December 27, 2021. This article scrutinizes the rejection grounds and the subsequent appeal process, shedding light on the complexities of patent law.
Background of the Patent Application:
The appellant filed the patent application on December 6, 2016, seeking protection for a portable vehicle tracker designed for real-time monitoring of vehicle operation and conditions. The invention encompasses various functionalities, including continuous monitoring, anomaly detection, alert generation, and emergency response.
Grounds for Rejection:
The rejection primarily pivots on the argument that the invention lacks a significant technical advancement over prior art documents, particularly D4 (US2002019703A1) and D5 (US2015019266A1). These documents purportedly cover the core functionalities claimed in the present invention.
Analysis of Prior Art:
Upon scrutiny, it is contended that the invention fails to deviate from the disclosures in D4 and D5. The court underscores that a combined analysis of teachings from these prior art documents leads to the conclusion that the present invention does not signify a significant advancement.
Motivation to Combine:
The court further contends that a person skilled in the art (PSITA), equipped with knowledge of D4 and D5, would be inclined to amalgamate elements from these prior arts. Such motivation may arise from industry needs or problems, explicitly suggested within the prior art or commonly known in the field.
Inventive Step Analysis:
Based on a comprehensive comparison of the prior art and the claimed invention, the court determines that the patent application lacks an inventive step. The features claimed either exist in the prior art or can be inferred from it. Consequently, the rejection under Section 2(1)(ja) of the Patents Act, 1970, is upheld.
Outcome of the Appeal:
The court dismisses the appeal, affirming the patent office's decision to reject the application. It concludes that the claimed invention falls short of meeting the requisite standards for patentability, thus warranting the rejection.
Implications:
This case underscores the significance of demonstrating a clear inventive step and technical advancement over prior art in patent applications. It accentuates the importance of meticulous analysis and documentation of prior art references to bolster patentability claims. Moving forward, innovators must conduct thorough assessments to ensure their inventions meet the stringent criteria for patent protection.
Case Title: Mahesh Gupta Vs Assistant Controller of Patent and Designs
Judgment/Order Date: 29.05.2021
Case No. C.A.(COMM.IPD-PAT) 328/2022
Neutral Citation: 2024:DHC:4457
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Sanjeev Narula H.J.
Disclaimer:
Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.
Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
United & United
Email: amitabh@unitedandunited.com
Ph No: 9990389539
The rejection of an Indian patent application for the ‘Portable Vehicle Management System’ has sparked legal contention, with the decision rendered on December 27, 2021. This article scrutinizes the rejection grounds and the subsequent appeal process, shedding light on the complexities of patent law.
Background of the Patent Application:
The appellant filed the patent application on December 6, 2016, seeking protection for a portable vehicle tracker designed for real-time monitoring of vehicle operation and conditions. The invention encompasses various functionalities, including continuous monitoring, anomaly detection, alert generation, and emergency response.
Grounds for Rejection:
The rejection primarily pivots on the argument that the invention lacks a significant technical advancement over prior art documents, particularly D4 (US2002019703A1) and D5 (US2015019266A1). These documents purportedly cover the core functionalities claimed in the present invention.
Analysis of Prior Art:
Upon scrutiny, it is contended that the invention fails to deviate from the disclosures in D4 and D5. The court underscores that a combined analysis of teachings from these prior art documents leads to the conclusion that the present invention does not signify a significant advancement.
Motivation to Combine:
The court further contends that a person skilled in the art (PSITA), equipped with knowledge of D4 and D5, would be inclined to amalgamate elements from these prior arts. Such motivation may arise from industry needs or problems, explicitly suggested within the prior art or commonly known in the field.
Inventive Step Analysis:
Based on a comprehensive comparison of the prior art and the claimed invention, the court determines that the patent application lacks an inventive step. The features claimed either exist in the prior art or can be inferred from it. Consequently, the rejection under Section 2(1)(ja) of the Patents Act, 1970, is upheld.
Outcome of the Appeal:
The court dismisses the appeal, affirming the patent office's decision to reject the application. It concludes that the claimed invention falls short of meeting the requisite standards for patentability, thus warranting the rejection.
Implications:
This case underscores the significance of demonstrating a clear inventive step and technical advancement over prior art in patent applications. It accentuates the importance of meticulous analysis and documentation of prior art references to bolster patentability claims. Moving forward, innovators must conduct thorough assessments to ensure their inventions meet the stringent criteria for patent protection.
Case Title: Mahesh Gupta Vs Assistant Controller of Patent and Designs
Judgment/Order Date: 29.05.2021
Case No. C.A.(COMM.IPD-PAT) 328/2022
Neutral Citation: 2024:DHC:4457
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Sanjeev Narula H.J.
Disclaimer:
Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.
Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
United & United
Email: amitabh@unitedandunited.com
Ph No: 9990389539
