Judicial Reconsideration of Patent Rejection: A Detailed Analysis of TVS Motor Company Limited v. The Deputy Controller of Patents and Designs

Introduction

In C.M.A.No.2115 of 2021, the Hon’ble High Court of Madras adjudicated an appeal under Section 117-A of the Patents Act, 1970 (hereinafter ‘the Act’, filed by TVS Motor Company Limited (hereinafter ‘the Appellant’). The Appellant challenged the rejection order dated 18.01.2021, issued by the Deputy Controller of Patents and Designs, in Indian Patent Application No.784/CHE/2012 titled "Accelerator Safety Control Device" . The appeal questioned the correctness of the evaluation conducted by the Patent Office, particularly regarding inventive step and interpretation of prior art references.

Background of the Appeal

The procedural journey began with the Appellant receiving a First Examination Report (FER) on 06.07.2018 raising objections inter alia on grounds of lack of inventive step based on prior art documents D1 to D3. A response to the FER was submitted on 25.12.2018, followed by a hearing notice dated 07.08.2020 scheduling a hearing on 23.09.2020. Pursuant to such hearing, written submissions dated 06.10.2020 were filed by the Appellant, including a comprehensive table distinguishing their invention from cited prior art. However, the application was rejected by the Controller.

Contentions of the Appellant

The Appellant’s counsel argued that:

• The Controller examined the first amended claims submitted in response to the FER rather than the last amended set of seven claims, which included one independent and six dependent claims.

• The invention pertains to an accelerator safety control device in the handle bar specifically designed for two wheelers (2W) or three wheelers (3W), using components such as a sliding carrier, slide guide, accelerator guide, brake link, and guide stopper.

• The prior art references (D1–D3) primarily deal with four-wheelers and do not disclose or suggest the specific configuration or application to handlebar-controlled vehicles.

Comparison with Prior Art (D1 to D3)

The counsel analyzed the cited prior arts:

• D1: Aimed to stop a motor vehicle even if the accelerator pedal may be mistakenly depressed or stuck in such depressed condition.

• D2: Addressed issues in an automatic transmission vehicle, particularly the problem of simultaneous engagement of accelerator and brake pedals.

• D3: Related broadly to an accelerator pedal control system.

The contention was that none of these documents disclosed the same vehicle type (2W/3W) or mechanical arrangement as claimed in the invention.

Contentions of the Respondent

The respondent’s counsel contended:

• The core problem of disengaging the accelerator when the brake is engaged was confronted and addressed in all cited prior arts.

• The differentiation based on vehicle type (i.e., two-wheeler vs four-wheeler) was merely a “workshop improvement”.

• Reliance was placed on the following judgements:

  • Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, particularly paragraphs 17 to 22: Emphasized that a monopoly cannot be created so as to interfere with the craftsman use of his skill and knowledge.

  • Lummus Novolen Technology GMBH v. Assistant Controller of Patents and Designs, 2025 SCC OnLine Del 4014: Discussed different tests for obviousness.

Observations by the Court

The Court scrutinized the independent claim 1, which was structured as a two-part claim. It was evident that the claimed invention:

• Is intended to be deployed on the handlebar of a two or three wheeler.

• Involved a unique configuration of parts that interact when the brake is applied, leading to disengagement of the accelerator.

Though dependent claim 6 included reference to a foot-operated brake lever, the Court clarified that the overall monopoly claim is confined to an accelerator safety control device for use in two or three wheelers.

Key Judicial Findings

1. Vehicle Type Relevance:

   • While the contention of the respondent that the problem to be solved in the claimed invention is identical to that resolved in the cited prior arts is partly correct, resolving a problem in one type of motor vehicle cannot be equated with resolving the same problem in a different type of motor vehicle.

2. Deficiency in Controller's Reasoning:

   • The impugned order merely stated that the components in the claimed invention are “already present” in prior art without explaining how a person skilled in the art would arrive at the claimed configuration.

   • No reference was made to the economic significance of the invention, which is an alternative to technical advance under Section 2(1)(ja).

3. Conclusion on Technical Advance:

   • The Controller’s finding that improvements were “mere advantages” rather than technical advancement over cited prior arts lacked detailed reasoning.

Final Directions and Disposition

The High Court held the impugned order unsustainable, and issued the following directions:

• Set aside the impugned order dated 18.01.2021.

• Remand the matter for fresh consideration by a different officer.

• A speaking order must be issued within three months after giving the appellant an opportunity of being heard.

No opinion was expressed on the merits of the patent application.

The Civil Miscellaneous Appeal was disposed of without costs.

Conclusion

This judgment reflects judicial emphasis on procedural propriety, substantive examination, and the contextual application of patentability standards. The High Court took a nuanced approach in evaluating the significance of vehicle type, claim scope, and the necessity for reasoned findings when rejecting patent applications, especially on grounds like lack of inventive step.