A Predictable Progression In A Technology Does Not Constitute An Inventive Step: Delhi High Court

INTRODUCTION

In a recent ruling by the Hon’ble Delhi High Court (hereinafter, “the Court”) in the case of Mahesh Gupta vs. Assistant Controller of Patents and Design (C.A.(COMM.IPD-PAT) 328/2022), the Court while rejecting an appeal regarding an Indian Patent Application relating to the field of communication technology found that a logical progression from the prior art does not encompass an inventive step.    

BACKGROUND

The Appellant in the matter had filed a patent application No. 201611041718 titled "Portable Vehicle Management System" in December 2016 before the Indian Patent Office (IPO). Said application relates to a portable vehicle tracker system. Upon examination, the Controller found the application to be obvious in light of the cited prior art and refused the grant of the patent in December 2018 under Section 2(1)(ja) of the Indian Patents Act, 1970  (hereinafter, “the Act”). Aggrieved by the decision of refusal, the Applicant filed an appeal before the Court.     

COURT’S ANALYSIS

The Appellant asserted that the technical advancement of their invention lies in the integration of multiple functionalities within a single, portable vehicle tracker device. Specifically, the advancement stems from the synergistic combination of various features within the claimed device, rather than from the individual features themselves.

While deciding the matter, the Court carefully observed the following aspects relating to analysis of inventive step in view of the combined effect of the two cited prior art references and held as follows:

1. Technical Advancement and Inventive Step: Upon comparing the cited prior art, it became evident to the Court that the technical advancement of the subject application does not lie in the integration of multiple functionalities within a single portable tracker device, as the core functionalities and features claimed in the present subject application are comprehensively covered by the prior art. The Court, while ‘mosaicing’ the multiple prior art references observed that all the claimed features of the subject patent application are already present in scattered form in existing technologies and comprehensively covered by the cited prior art. In this backdrop, the Court found no inventiveness in the said features and held that it is a natural corollary to consider privacy protections when designing new technologies.  

   
   

   The Court further emphasized that the mere use of a portable framework does not constitute a ‘leap’ in innovation but rather represents a natural and expected progression in technological development. In the context of the present matter, the Court opined that the mere incorporation of face masking and face detection features into vehicle tracking systems is just an addition of a known technology in the new context and is a minor modification that does not contribute to a non-obvious advancement.

   
   

2. Doctrine of Non-obviousness: The Court emphasized on the doctrine of non-obviousness, a standard for patent eligibility that necessitates substantial innovation. The Court found that a person skilled in the art of vehicle diagnostics would logically combine elements from prior art to enhance tracking systems. Combining these elements aligns with industry needs, making it a predictable refinement of existing technologies.

   
   

3. Common General Knowledge: The Court found that the subject patent application fails to state a significant technical advancement over the cited prior art. The Court further made reference to the multiple examples of similar technical information available to the person skilled in the art found that the devices available in the market demonstrate that portable tracking devices with various sensors were well-known before the priority date of the subject application. Thus, the Court held that by combining these teachings with common general knowledge, any person skilled in the art may arrive at the claimed subject matter.

   
   

4. Hindsight Bias: The Court acknowledged the impact of hindsight bias in patent jurisprudence, where events seem obvious only after they have occurred. To counteract this bias, it is essential to assess prior art from the perspective of a skilled person at the time of the invention. Despite this, the Court found that both the cited prior art references provide a clear path to the claimed invention. The Court concluded that shift from fixed to portable systems is just a natural advancement in technology, instead of a distinct inventive step.

   
   

   THE COURT’S DECISION AND CONCLUSION

   
   

   After comparing the claimed features and combined teachings of prior art with examples of common general knowledge, the Court was of the view that the present subject application lacks an inventive step. Thus, the Assistant Controller’s decision to refuse the subject patent application under Section 2(1)(ja) of the Act was justified. In view of the same, the present appeal was dismissed.

   
   

   The Court’s judgment is vital specifically in respect of patents relating to the ever-developing field of Computer Related Inventions (CRIs) and provides clarity to the stakeholders as to the standards of an invention in India.