The Madras High Court, in an appeal preferred by TVS Motors against refusal of their patent application number 202141013547, entitled “System for Selectively Operating Regenerative Braking in a Vehicle and Method thereof”, in TVS Motor Company Limited vs The Assistant Controller of Patents and Designs [CMA(PT) No. 8 of 2024], set aside the impugned order and remanded the matter to the Patent Office for reconsideration.

The claims of the subject invention disclosed a system or a method for controlling the operation of a motor based on:

• the regenerative breaking mode selected by the user: A user could select between a high and a low regenerative mode, and
• the vehicle parameters: Comprising the state of charge of the battery pack, the temperature of the battery pack and the fault condition of the battery pack.

Put differently, the invention disclosed a system where regeneration could be activated by the user’s choice of the regeneration mode and would also depend on the vehicle parameters comprising the state of charge of the battery pack, the temperature of the battery pack and the fault condition of the battery pack of the vehicle. As per the Appellant, the technical advance and non-obvious solution provided by the claimed invention was in the choice available to the user of the vehicle to select the regeneration mode.

The Controller refused the subject application on the grounds of lack of inventive step and insufficient disclosure. Regarding lack of inventive step, the Controller reasoned that the cited prior art documents disclosed a dependency of regeneration on vehicle parameters. For insufficient disclosure, the Controller pointed out that the complete specification of the subject application did not adequately describe the best method of performing the claimed invention as required under Section 10(4) of the Patents Act, 1970. The Controller specifically reasoned that the complete specification lacked details regarding how the vehicle parameters were obtained and the threshold values required to enable or disable regenerative braking.

The Court systemically compared the claims of the subject application against the cited prior art documents and noted that the prior art disclosed a regenerative braking system comprising a combination regenerative braking and reverse switch operable between regenerative braking mode and a reverse mode. The Court observed that there was no discussion in the impugned order regarding obviousness “on the basis of the user being in a position to select a particular regenerative mode from and out of more than one mode, and such selection being the trigger for the regenerative braking process to operate after reckoning specific vehicle parameters”. The Court further noted that there was no reason provided in the order to support the conclusion that the claimed invention would be obvious to a person skilled in the art based on the prior art. Noting these aspects, the Court held that the Controller failed to properly examine the case on non-obviousness.

Regarding insufficiency of disclosure, the Court observed that the impugned order highlighted that the vehicle parameters (state of charge of the battery pack, temperature of the battery pack, and fault condition of the battery pack) were essential features of the invention and ought to have been disclosed in the specification. The Court was of the view that specifying the fault condition of the battery pack was not necessary for disclosure, as the system would indicate any such fault conditions. However, the Court pointed out that the Appellant had not disclosed the predefined regenerative and charging current values or the predefined state of charge of the battery pack and determined that this aspect required reconsideration during the remand of the subject application.

In view of the deficiencies in the impugned order, the Court set aside the impugned order and remanded the application back to the Patent Office for reconsideration by another Controller.