Economic significance should be considered as an alternative to technical advance in the assessment of inventive step

House no. 316, Ground Floor "A" Sector, Yelahanka New Town Bengaluru- 560 064

1203, The Spire-2, Shital Park BRTS, 150 Feet Ring Road,Rajkot - 360007 Phone : +91 281 242 731

203, 2nd Floor, Shriji Palace,Savsar Plot, Main Road, Morbi-363641 INDIA Phone:91 2822225263

312-313, 3rd Floor,
Abhishek Complex, Akshar Chowk, Old Padra Road,
Vadodara 390 020 INDIA
Phone: (0265) 2322015

The impugned order for rejecting an Indian Patent Application filed by TVS Motor Company Limited, titled as “Accelerator Safety Control Device”, has been appealed before Hon’ble Madras High court (TVS Motor Company Limited vs. Deputy Controller of Patents and Designs Pronounced on 8th July, 2025 C.M.A. No. 2115 of 2021).

The Controller had rejected the application on the grounds of lack of inventive step with regard to the cited prior arts D1-D3. The appellant submitted that the claimed invention is directed at providing an accelerator safety control device which includes sliding carrier, slide guide, accelerator guide, brake link and guide stopper designed for use in two or three wheelers and not in four wheelers. While the cited prior arts (D1-D3) all are intended to be applied to four wheelers, the appellant pointed out that, although the problem being solved in the claimed invention is identical to that resolved in the cited prior arts but resolving a problem in one type of motor vehicle cannot be equated with resolving the same problem in a different type of motor vehicle.

The appellant also submitted that written submissions were completely disregarded while passing the impugned order. Further, appellant submitted that the Controller had erroneously recorded that all the components of the claimed invention are present in prior arts D1 to D3.

The appellant further argued that if Controller was of the view that a person skilled in the art could arrive at the claimed invention based on one or more cited prior arts, the reasons for such conclusion should have been included in the impugned order.

Section 2(1)(ja), reads as follows:

Section 2(1)(ja)- inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.

Additionally, the Hon’ble Court stated that while the Controller has focused on the requirement of technical advance as it’s an requirement under section 2(1)(ja), it should also be open to the appellant to show economic significance of the claimed invention as an alternative to technical advance.

After considering the matter, the Hon’ble Court remanded for reconsideration.

Author : Saumya Shah
Designation: Patent Analyst