The claimed invention must demonstrate a technical contribution over prior art to qualify for patentability, and the impugned order lacked sufficient reasoning on this aspect.

JUDGMENT :

(SENTHILKUMAR RAMAMOORTHY, J.)

This appeal is directed against the order dated 31.05.2024 rejecting Indian Patent Application No.6617/CHE/2014 dated 26.12.2024 in respect of a claimed invention titled "VEHICLE MONITORING SYSTEM AND METHOD THEREOF".

2. Pursuant to a request from the appellant, the first examination report was issued on 26.02.2020. In the said report, objections were raised inter alia on the ground of lack of invention step by citing two prior art documents (D1 and D2). The appellant replied to the FER on 26.02.2020. Hearing notice dated 05.03.2024 was issued thereafter and this was followed by a further hearing notice dated 03.04.2024. Pursuant to the hearing, the appellant also filed written submissions. It should be mentioned that the respondent cited an additional prior art, namely, Prior Art D3, in the subsequent hearing notice dated 03.04.2024. The order impugned herein was issued in these facts and circumstances.

3. Learned counsel for the appellant referred to the complete specification and submitted that the claimed invention relates to a vehicle monitoring system for use in two wheelers. He pointed out that the vehicle monitoring system enables the collection of data relating to vehicle health on multiple parameters. It also provides data with regard to traffic conditions prevailing on the route traversed by the vehicle for purposes of suggesting alternative routes. In fact, he submits that it also enables the user to listen to a playlist on iTunes.

4. After referring to the current claims of the appellant, the first contention of learned counsel was that the priority date of the claimed invention is 26.12.2014. Consequently, he submits that prior art D3, which was published on 12.02.2015, does not qualify as prior art under the Patents Act, 1970 . He further submits that prior art D1, which is the other prior art relied on under the impugned order is a non-patent literature pertaining to a vehicle health monitoring system. According to learned counsel, prior art D1 does not provide for the transmission of data collected by the system to the user through a Smartphone. In addition, he adds that such data would be available as per D1 only when the vehicle is switched on, whereas the claimed invention would provide such information to the Smartphone even if the vehicle is switched off. In support of this contention, he refers to the independent claim-1wherein it is stated inter alia "said vehicle being in one of switched on or stop condition".

5. By referring to the impugned order, learned counsel submits that the respondent discussed prior arts, D1, D2 and D3 in paragraph 11 and thereafter, concluded in paragraph 12 that the claimed invention does not comprise any feature making a technical contribution over the teaching of D1 and D3 and it cannot be regarded as involving an inventive step. Learned counsel submits that such conclusion was drawn without closely examining the features of the claimed invention in contra distinction to those of prior arts D1 and D3. Consequently, he submits that interference with the impugned order is necessary.

6. Learned counsel for the respondent refuted these contentions. With regard to the contention that D3 does not qualify as prior art, by referring to Sections 11 and 13 of the Patents Act, learned counsel submits that the priority date would be the date of lodging the provisional specification, provided the claims are fairly based on disclosures made in the provisional specification. By comparing and contrasting the summary in the provisional specification and the complete specification, he submits that the claims made in the complete specification are not fairly based on disclosures in the provisional specification. After pointing out that the complete specification was filed on 12.12.2015, he submits that D3, which was published on 12.02.2015, qualifies as prior art.

7. Upon considering the rival contentions, the first aspect to be considered is whether D3 quali