Madras High Court
Tvs Motor Company Limited vs The Controller Of Patents & Designs on 27 February, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
C.M.A. (PT) No.43 of 2024
THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 27.02.2025
CORAM :
The Hon'ble Mr.Justice SENTHILKUMAR RAMAMOORTHY
C.M.A. (PT) No.43 of 2024
TVS Motor Company Limited,
No.29, Haddows Road,
Chennai 600 006, Tamil Nadu, India. .. Appellant
Vs
The Controller of Patents & Designs,
The Patent Office, Intellectual Property
Building, G.S.T.Road, Guindy,
Chennai 600 032. .. Respondent
Prayer: Appeal filed under Section 117 A of the Patents Act, 1970, to set
aside the order dated 31.05.2024 passed by the Respondent in Indian Patent
Application No.6617/CHE/2014 and allow Indian Patent Application No.
6617/CHE/2014 to proceed for grant or based on the facts and
circumstances, Patent Application No. 6617/CHE/2014 be remanded back
to a different Controller for a fresh time bound consideration.
For Appellant : Mr.S.Harish
for M/s.Thriyambak J.Kannan
For Respondent : Mr.M.Karthikeyan
Central Govt. Spl. Panel Counsel
*****
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C.M.A. (PT) No.43 of 2024
JUDGMENT
This appeal is directed against the order dated 31.05.2024 rejecting
Indian Patent Application No.6617/CHE/2014 dated 26.12.2024 in respect
of a claimed invention titled "VEHICLE MONITORING SYSTEM AND
METHOD THEREOF".
2. Pursuant to a request from the appellant, the first examination
report was issued on 26.02.2020. In the said report, objections were raised
inter alia on the ground of lack of invention step by citing two prior art
documents (D1 and D2). The appellant replied to the FER on 26.02.2020.
Hearing notice dated 05.03.2024 was issued thereafter and this was
followed by a further hearing notice dated 03.04.2024. Pursuant to the
hearing, the appellant also filed written submissions. It should be
mentioned that the respondent cited an additional prior art, namely, Prior
Art D3, in the subsequent hearing notice dated 03.04.2024. The order
impugned herein was issued in these facts and circumstances.
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3. Learned counsel for the appellant referred to the complete
specification and submitted that the claimed invention relates to a vehicle
monitoring system for use in two wheelers. He pointed out that the vehicle
monitoring system enables the collection of data relating to vehicle health
on multiple parameters. It also provides data with regard to traffic
conditions prevailing on the route traversed by the vehicle for purposes of
suggesting alternative routes. In fact, he submits that it also enables the
user to listen to a playlist on iTunes.
4. After referring to the current claims of the appellant, the first
contention of learned counsel was that the priority date of the claimed
invention is 26.12.2014. Consequently, he submits that prior art D3, which
was published on 12.02.2015, does not qualify as prior art under the Patents
Act, 1970. He further submits that prior art D1, which is the other prior art
relied on under the impugned order is a non-patent literature pertaining to a
vehicle health monitoring system. According to learned counsel, prior art
D1 does not provide for the transmission of data collected by the system to
the user through a Smartphone. In addition, he adds that such data would be
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available as per D1 only when the vehicle is switched on, whereas the
claimed invention would provide such information to the Smartphone even
if the vehicle is switched off. In support of this contention, he refers to the
independent claim-1wherein it is stated inter alia "said vehicle being in one
of switched on or stop condition".
5. By referring to the impugned order, learned counsel submits that
the respondent discussed prior arts, D1, D2 and D3 in paragraph 11 and
thereafter, concluded in paragraph 12 that the claimed invention does not
comprise any feature making a technical contribution over the teaching of
D1 and D3 and it cannot be regarded as involving an inventive step.
Learned counsel submits that such conclusion was drawn without closely
examining the features of the claimed invention in contra distinction to
those of prior arts D1 and D3. Consequently, he submits that interference
with the impugned order is necessary.
6. Learned counsel for the respondent refuted these contentions.
With regard to the contention that D3 does not qualify as prior art, by
referring to Sections 11 and 13 of the Patents Act, learned counsel submits
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that the priority date would be the date of lodging the provisional
specification, provided the claims are fairly based on disclosures made in
the provisional specification. By comparing and contrasting the summary in
the provisional specification and the complete specification, he submits that
the claims made in the complete specification are not fairly based on
disclosures in the provisional specification. After pointing out that the
complete specification was filed on 12.12.2015, he submits that D3, which
was published on 12.02.2015, qualifies as prior art.
7. Upon considering the rival contentions, the first aspect to be
considered is whether D3 qualifies as prior art or not. The provisional
specification was filed on 26.12.2014 and the appellant claims priority from
the said date. D3 was first cited in notice dated 03.04.2024 for a hearing on
30.04.2024. In the written submissions filed after such hearing, the
appellant did not raise the contention or any objection that D3 does not
qualify as prior art. Instead, the appellant proceeded to distinguish the
claimed invention from D3. In those circumstances, the impugned order
does not contain a discussion or finding on whether D3 qualifies as prior art
or not.
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8. When the complete specification of the claimed invention is
examined, it appears to be a vehicle monitoring system which is computer
implemented and linked to the user's personal device such as a Smartphone
or Tablet. In order to appreciate the nature of the claimed invention, it is
relevant to set out the independent claim 1 and dependent claims 8 and 9,
which are as under:
"1. A real-time vehicle monitoring system for a two wheeled
vehicle, said real time vehicle monitoring system
comprising:
a controller (2) configured to receive and process
signals received from sensors provided in said
vehicle containing digital and analog information
about said vehicle,
a processed signal (1) being converted into a
processed data; and characterized in that,
a communication device (3) that communicates
said processed data related to digital and analog
information about said vehicle, to a Smartphone
having a display screen (7), wherein said vehicle
being in one of switched ON or stopped condition."
...
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8. The real-time vehicle monitoring method of claim 5,
wherein said user and traffic can be traced, and said
user being intimated in advance by predicting traffic on
usual driving path of said user and suggests alternative
route using GPS and GPRS modules that communicates
with said controller (2).
9. The real-time vehicle monitoring method of Claim 5,
wherein in case of song list, preferences being already
known and used in several applications online,
including as a playlist on iTunes.
9. The independent claim 1 discloses that the claimed invention is a
real-time vehicle monitoring system for a two-wheeled vehicle. Prior art
D1, which was published in 2012, is a non-patent literature titled "Vehicle
Health Monitoring System". It discloses an embedded system for detecting
vehicle condition by monitoring internal parameters. Prima facie, it does
not appear to involve the use of a Smartphone or Tablet for transmission
purposes. Prior art D2 is a patent literature published on 12.09.2013. From
paragraphs [0014] and [0015], it appears that it provides for a centralised
control to the user for use in lieu of knobs, switches and buttons so as to
enable operation of vehicle parts and accessories. Prior art D3 is a patent
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literature titled "Automatic Communication Method between Smartphone
and Navigation Device using Sensor". From independent claim 1 appended
thereto, it appears that it is a navigation device used with Smartphone and
enables data transmission between Smartphone and the navigation device.
10. In the impugned order, the respondent set out the features of D1,
D2 and D3 in paragraph 11 thereof. Thereafter, independent claim 1 of the
claimed invention was set out. This is followed by these conclusions:-
"As claim 1 does not comprise any feature making a
technical contribution over the teaching of D1 and D3, it
cannot be regarded as involving an inventive step.
Independent claim-5 is a method claim w.r.t. above system
claim. Hence independent claim-5 is also not involving an
inventive step.
The additional features of dependent claims 2-4 and 6-10 do
not add anything inventive features to the claims on which they
depend.
Therefore the dependent claims 2-4 and 6-10 are also not
considered to be inventive."
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11. Although the respondent has drawn reference to the judgment of
the Division Bench of the Delhi High Court in F.Hoffmann-La Roche Ltd.
vs. Cipla Ltd. (2012) and the judgment of the Hon'ble Apex Court in
Biswanath Prasad Radhey Shyam vs. Hindustan Metal Industries Ltd.,
(AIR 1982 SC 1444), there is no indication in the impugned order as to how
the claimed invention is obvious from D1 to D3. Instead, the respondent
has merely recorded the conclusion that the claimed invention is novel
inasmuch as all the features of the claimed invention are not contained in
the cited prior arts, but it would be obvious to a person skilled in the art.
The order contains no discussion as to whether there are cues or pointers in
the cited prior art which would lead the person skilled in the art to the
claimed invention. Consequently, the impugned order calls for interference.
12. Therefore, the impugned order dated 31.05.2024 is set aside and
the appeal is allowed. The matter is remanded for re-consideration on the
following terms:
1) In order to preclude the possibility of pre-determination, an officer
other than the officer who issued the impugned order shall
undertake re-consideration;
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2) After providing a reasonable opportunity to the appellant, a
reasoned decision shall be issued within four months from the date
of receipt of a copy of this order; and
3) For the avoidance of doubt, it is clarified that no observations have
been made herein on the merits of the patent application.
There shall be no order as to costs.
27.02.2025
Index : No
NC : No
Speaking Order
sra
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To
The Controller of Patents & Designs,
The Patent Office, Intellectual Property
Building, G.S.T.Road, Guindy,
Chennai 600 032.
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Senthilkumar Ramamoorthy, J.
(sra)
27.02.2025
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