Obviousness analysis entails consideration of several key factors to determine whether an invention meets the legal requirements for patentability. These include conducting a prior art search, determining the notional person skilled in the art (PSITA), considering common general knowledge, assessing the combination of prior art, mitigating hindsight bias, and ensuring an objective evaluation of the inventive step. The Delhi High Court, in its recent decision in Mahesh Gupta vs Assistant Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 328/2022], offered clarity towards some nuances surrounding the assessment of obviousness.

The refusal of the Controller of Patents under appeal before the Delhi High Court was in relation to an application that claimed a portable vehicle tracker designed to monitor the operation and conditions within a vehicle. The inventive concept of the invention centred around a multifunctional, portable vehicle tracker characterized by its capabilities of real-time monitoring, anomaly detection, alert generation, and emergency response. The technical advancement of the invention was asserted to lie in the integration of multiple functionalities within a single, portable vehicle tracker device.

The Controller of Patents refused this application for lacking technical advancement over the prior art documents D4 (US2002019703A1) and D5 (US2015019266A1). In evaluating inventive step, the Controller had assessed the combined effect of prior art documents D4 and D5, along with common general knowledge.

In the appeal the Delhi High Court provided detailed insights into the aspects of mosaicing and common general knowledge for evaluation of inventive step.

Mosaicing: The ruling outlined that mosaicing is permissible under certain circumstances, particularly when a person skilled in the art upon referring a prior art document would logically seek further insight from another document to enhance their understanding of the initial document. The combination of references should reflect a rational or informed progression guided by the skilled person’s expertise. Put differently, if combining individual elements of various prior arts, straightforwardly and without any inventive effort, leads to the claimed invention, then such an invention may be deemed obvious. It was underscored that such mosaicing must not be a mere theoretical possibility but rather a step that would be obvious for a PSITA to try with a reasonable expectation of success.

Applying the principles of mosaicing to documents D4 and D5 the Court noted that the two documents were inter-related as both pertained to real-time monitoring of vehicle operation using various sensors and that the transition from the fixed system described in D4 to the portable framework detailed in D5 did not constitute a ‘leap’ in innovation but rather represented a natural and expected progression in technological development. This transition was held to align with the prevailing trend towards greater mobility and flexibility in device usage, and therefore, was held to be a clear logical pathway that a skilled person would follow, using known technologies and without inventive ingenuity.

The Court found the core functionalities and features claimed in the refused application to be fully covered by documents D4 and D5. The only feature which did not seem to be covered by the prior art was the detection and masking of faces. However, the Court held that detection and masking of faces was a well-known technique even on the date of filing of the rejected application and applying well-known techniques to vehicle tracking systems does not constitute an inventive step but was only an application of an existing technology to a new context and while said feature was useful, it did not meet the criteria for patentability. The Court noted that minor differences do not contribute significantly to the overall inventive concept and are merely incremental improvements that would be obvious to a person skilled in the art.

Common General Knowledge: The Court further emphasised the importance of considering the common general knowledge within the relevant field that a PSITA would possess. It was observed that this common general knowledge, which encompasses widely known and accepted technical information, also forms the backdrop against which the inventive step of a claimed invention should be assessed. In the context of the invention under evaluation, by highlighting the various portable tracking devices with sensors available in the market, which the impugned order mentioned, the Court implied that the ubiquity of similar inventions in the market could serve as an indicator of the well-known nature of the claimed invention.

The Court also highlighted that the assessment of obviousness should be free from hindsight bias. To mitigate this bias, the Court stressed the importance of evaluating prior art from the perspective of a skilled person at the time of the invention, devoid of any knowledge of the subsequently claimed invention.

Finding the invention claimed in the refused application lacking in inventive step, the Court upheld the order of the Controller and refused to grant a patent to the appellant.