Madras High Court Remands TVS Motor's Patent Application for Reconsideration

Court Criticizes Lack of Robust Analysis in Patent Rejection, Directs New Review with Additional Data and Prior Art

In a significant development concerning patent law, the Madras High Court has remanded a patent application filed by M/s. TVS Motor Company Limited for reconsideration. The application, which was previously rejected by the Assistant Controller of Patents & Designs, was challenged by TVS Motor for lacking an inventive step as mandated by Section 2(1)(ja) of the Patents Act, 1970.

The case revolves around a patent application for a "Vehicle Frame Assembly" designed for two-wheeled vehicles, specifically scooters. The invention claimed to optimize load distribution and space by strategically positioning gusset plates within the frame assembly. TVS Motor argued that this arrangement led to significant technical improvements, including enhanced structural integrity and increased utility box capacity.

Justice Senthilkumar Ramamoorthy, presiding over the matter, found the Assistant Controller's order lacking in a robust obviousness analysis and criticized it for failing to adequately engage with the appellant's submissions. The court observed that the impugned order did not adopt the five-step analysis required to evaluate obviousness and inventive step, as outlined in previous landmark cases such as F. Hoffman La Roche v. Cipla.

The High Court pointed out that the cited prior arts, D1 and D3, were insufficient to deem the claimed invention obvious to a person skilled in the art. It emphasized that the inventive step should be evaluated by considering the technical advance and non-obviousness to a skilled person, which was not done in the initial assessment.

Highlighting the need for a meticulous re-examination, the court has directed that the matter be reconsidered by a different patent officer to avoid any bias. The respondent is allowed to introduce additional prior art, and TVS Motor is permitted to submit further technical data to substantiate its claims of load shifting and structural benefits. The court also stressed the necessity of issuing a detailed speaking order within four months of receiving the High Court's directive.

This judgment underscores the importance of thoroughness in patent evaluations, particularly in distinguishing between genuine innovations and mere workshop improvements. The decision is expected to have wider implications for patent proceedings, setting a precedent for a more rigorous approach to patent rejections on grounds of lacking an inventive step.

Bottom Line:

Patent rejection - Claimed invention rejected for lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970 - Matter remanded for reconsideration with directions for robust obviousness analysis, opportunity to cite additional prior art, and submission of further technical data by the applicant.

Statutory provision(s): Section 2(1)(ja) of the Patents Act, 1970

M/s. TVS Motor Company Limited v. Assistant Controller of Patents & Designs, (Madras) : Law Finder Doc Id # 2819842