In the case of Mahesh Gupta v. Assistant Controller of Patents and Designs, the Delhi High Court upheld the decision of the Respondent- Assistant Controller of Patents and Designs to refuse the appellant’s patent application for a Portable Vehicle Management System. The Assistant Controller of Patents and Designs reused the patent stating that it does not meet the inventive step requirement under Section 2(1)(ja) of the Indian Patent Act, 1970, and fails to qualify as an invention under Section 2(1)(j) of the Act.
The Appellant contended that the Respondent failed to apply widely accepted tests for evaluating the inventive step, as outlined in the Manual of Patent Office Practice and Procedure. The Appellant further emphasized the invention's portability which is a key feature that was overlooked by the Respondent. Additionally, the Appellant argued that the Respondent did not properly establish the standard of a Person Having Ordinary Skill in the Art (“PHOSITA”) and instead assessed the prior art from the perspective of an overly skilled and innovative researcher.
As per the Appellant, the Patent allowed vehicle owners to monitor their vehicle’s operation remotely, a problem not addressed by the prior art, which mainly focused on warning nearby drivers of reckless driving or assessing risks related to using portable devices while driving. The Appellant also claimed that the Respondent's conclusion of obviousness based on prior art documents D4 and D5 was not communicated to them which basically means they were denied a fair opportunity to respond. They also cited Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd. and Enercon (India) Limited v. Aloys Wobben concerning hindsight bias.
The central issue before the Court was whether the claims of the Subject Patent demonstrated an inventive step in light of the teachings of prior art documents D4 and D5. Upon comparing the technical advancements of the Subject Patent with those disclosed in D4 and D5, the Court found that the invention did not reveal any substantial improvements over the prior art. It noted that the features and functionalities claimed in the Subject Patent, such as real-time monitoring, anomaly detection, alert generation, emergency response, and sensor integration, were comprehensively covered by D4 and D5. While face detection and masking weren't explicitly mentioned in the prior art, the court deemed this an obvious addition for a Person Skilled in the Art (PSITA) given the widespread use of such technology.
The court discussed the concept of "mosaicking" which is combining multiple prior art references and concluded that integrating the teachings of D4 and D5 would lead a PSITA to a solution very similar to the subject patent, representing a natural progression rather than a significant leap in technology.
Addressing non-obviousness, the court defined a PSITA in this context as someone proficient in on-board diagnostics design and current with the latest developments. It determined that such a person would likely arrive at the claimed invention given the existing technologies and industry needs.
The court also considered the issue of hindsight bias, emphasizing the importance of evaluating prior art from the perspective of a PSITA at the time of invention. It concluded that D4 and D5 provided a clear path to the claimed invention without relying on hindsight.
Ultimately, the court upheld the rejection of the patent application, holding that the claimed invention lacked an inventive step as required under Section 2(1)(ja) of the Indian Patent Act and the features of portability, comprehensive monitoring, and anomaly detection were either disclosed in or could be inferred from the prior art. The Court concluded that the claimed invention lacked an inventive step. The features of portability, comprehensive monitoring, and anomaly detection were either disclosed or could be reasonably inferred from prior art. Consequently, the Court upheld the rejection of the Subject Patent application under Section 2(1)(ja) for failing to demonstrate an inventive step.