Summary
The Madras High Court has allowed an appeal by TVS Motor Company, challenging the rejection of its Vehicle Monitoring System application. The Court found that the Controller failed to properly evaluate whether the cited prior art was valid and did not provide adequate reasoning for rejecting the inventive step. It has directed a fresh evaluation by a different Controller.
In a significant ruling, the Madras High Court allowed an appeal filed by TVS Motor Company Limited (“Appellant”) challenging the rejection of its Indian Patent Application No. 6617/CHE/2014. The application pertained to an invention titled “Vehicle Monitoring System and Method Thereof,” which proposed a real-time system for monitoring two-wheeled vehicles and transmitting diagnostic data to a user’s smartphone, even when the vehicle is switched off.
The Appellant contended that its invention was novel and inventive, offering capabilities such as traffic prediction, alternative route suggestions, and even media integration features like accessing iTunes playlists. The application claimed priority from 26 December 2014, based on a provisional specification. The First Examination Report (FER) issued on 26 February 2020 cited prior art D1 and D2 to object to the inventive step. Later, in a second hearing notice dated 3 April 2024, an additional prior art reference, D3, was introduced.
The Appellant argued that D3, published on 12 February 2015, could not be considered as prior art because it postdated the priority date. Additionally, the appellant distinguished its invention from D1 and D3, asserting that D1 lacked any smartphone integration and only worked when the vehicle was on, whereas the claimed invention worked even when the vehicle was off. It also argued that the Controller failed to engage in a substantive comparison of its claims against the prior art.
In response, the Controller relied on Sections 11 and 13 of the Patents Act to argue that the claims in the complete specification (filed on 12 December 2015) were not fairly based on the provisional specification. Hence, D3 qualified as prior art. The impugned order concluded that the claimed invention lacked inventive step over D1 and D3 and that dependent claims 2–4 and 6–10 also lacked any additional inventive features.
While analyzing the issue, the Court observed that the Controller failed to consider whether D3 was a valid prior art, even though it was introduced only at the hearing stage. It further noted that the conclusion on lack of inventive step was unsupported by detailed reasoning. There was no analysis of how a person skilled in the art would be motivated by the cited prior art to arrive at the claimed invention. Although the order cited judicial precedents, it failed to apply them meaningfully to the facts at hand. Accordingly, the High Court set aside the impugned order and remanded the matter to a different Controller for fresh consideration. The Court directed that a reasoned decision be issued within four months and clarified that it had not expressed any view on the merits of the application.
Citation: Tvs Motor Co. Ltd. v. Controller of Patents & Designs, C.M.A. (PT) No. 43 of 2024 (H.C. Madras Feb. 27, 2025).
Available at: https://indiankanoon.org/doc/173530176/
Article Reviewed by: Dr. Sowmya S Murthy
Accessibility Reviewed by: Gaurav Mishra
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