[Cites 13, Cited by 0]
Bombay High Court
Navya Network Inc vs Assistant Controller Of Patents And ... on 15 April, 2026
2026:BHC-OS:9481
6-COMMP-L-15327-2025
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
COMMERCIAL MISCELLANEOUS PETITION (L) NO. 15327 OF 2025
Navya Network Inc. ...Petitioner
Versus
Assistant Controller of Patents and Designs ...Respondent
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Mr. Manish Aryan (through VC), a/w. Mr. Abhai Pandey, Ms. Manisha Singh, Mr.
Nishant Rai, Ms. Khushi Chauhan, Ms. Shweta Nisar i/b. SONAL DOSHI & CO.
for Petitioner.
Mr. Yashodeep Deshmukh a/w. Mr. Ashutosh Mishra, Ms. Vaidehi Pradeep, Ms.
Rutwik Rao, Mr. Pratam Gawali for Respondent.
-----
CORAM : ARIF S. DOCTOR, J.
RESERVED ON : 16th MARCH 2026
PRONOUNCED ON : 15th APRIL 2026
JUDGMENT
1. The present Petition has been filed under Section 117A of the Patents Act,
1970 ("Patents Act") challenging the Order dated 27th May 2024
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("Impugned Order") passed by the Respondent, i.e., Assistant Controller
of Patents & Designs, refusing the Petitioner's Patent Application No.
2068/MUMNP/2014 titled "Medical Research Retrieval Engine", a PCT
national phase application claiming priority to US Application No.
13/428,539 dated 23rd March 2012.
2. The Application was refused on two grounds: (i) lack of inventive step under
Section 2(1)(ja) of the Patents Act in view of the prior art documents D1-
D3; and (ii) non-patentability under Section 3(k) on the ground that the
claimed invention constitutes an algorithm and computer program per se.
Submissions on behalf of the Petitioner:
3. Mr. Aryan, the Learned Counsel appearing on behalf of the Petitioner,
submitted that while the Respondent found that Claims 1-24 lacked
inventive step in view of prior art documents D1-D3, the Impugned Order
contained no reasoning whatsoever as to how the claimed invention was
taught by a combination of D1-D3. He pointed out that the Respondent
merely reproduced Claim 1 of the Application and baldly held that the
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Petitioner's claim lacked inventive step without any reasoning or basis to
support such a finding.
4. Mr. Aryan submitted that in assessing inventive step under Section 2(1)(ja)
of the Patents Act, the Respondent had failed to follow the five-step test as
laid down by the Delhi High Court in the case of F. Hoffmann La Roche
Ltd. v. Cipla Ltd.1 viz.
120. From the decisions noted above to determine obviousness/lack of inventive
steps the following inquiries are required to be conducted:
Step No. 1: To identify an ordinary person skilled in the art,
Step No. 2: To identify the inventive concept embodied in the patent,
Step No. 3: To impute to a normal skilled but unimaginative ordinary person
skilled in the art what was common general knowledge in the art at the priority
date.
Step No. 4: To identify the differences, if any, between the matter cited and the
alleged invention and ascertain whether the differences are ordinary application
of law or involve various different steps requiring multiple, theoretical and
practical applications,
Step No. 5: To decide whether those differences, viewed in the knowledge of
alleged invention, constituted steps which would have been obvious to the
ordinary person skilled in the art and rule out a hindsight approach."
2015 SCC OnLine Del 13619.
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He pointed out that the above was reaffirmed by the Division Bench of the
Delhi High Court in Tapas Chatterjee v. Assistant Controller of Patents
and Designs and Anr.2. He submitted that the fact that the above steps were
not followed by the Respondent, was apparent from a plain reading of the
Impugned Order.
5. Mr. Aryan then placed reliance upon the decision of the Delhi High Court in
the case of Auckland Uniservices Limited v. Assistant Controller of Patents
and Designs3 to submit that an order refusing a patent application must be a
reasoned and speaking order and must reflect due application of mind to the
applicant's submissions and the statutory requirements under the Patents Act.
He submitted that a mere reiteration of objections or a cryptic conclusion,
without addressing the Applicant's arguments on patentability, which would
include novelty and inventive step, would be in violation of the principles of
natural justice and would thereby render the order susceptible to challenge.
2025 SCCOnLine Del 6369.
2022 SCC OnLine Del 5165.
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6. Mr. Aryan pointed out that the reasoning given by the Respondent in the
Impugned Order for refusing Claims 1-24 under Section 3(k) was entirely
different from the objection communicated in the hearing notice dated 5th
March 2024. He pointed out that the hearing notice only flagged that Claims
1-24 did not define any structural/hardware features and defined computer
programs, whereas the Impugned Order, for the first time, introduced the
reasoning that the claimed invention provided a "self-learned ontology",
which was non-technical and merely a computer algorithm. He submitted
that these new grounds were never communicated to the Petitioner, thereby
depriving the Petitioner of an opportunity to address them. He thus
submitted that the Impugned Order would have to be set aside and the matter
remanded for de novo consideration.
7. Mr. Aryan then submitted that despite having amended Claims 1-24 to
incorporate hardware features and having filed written submissions in
response to the hearing notice, the Respondent had completely changed its
objection under Section 3(k) of the Patents Act in the Impugned Order by
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taking new grounds that were never previously communicated to the
Petitioner. He submitted that this, therefore clearly constituted a breach of
the principles of natural justice.
8. Mr. Aryan then pointed out that the Respondent had, in the Impugned Order,
inter alia, held as follows, viz.
"The concept of ontology learning is well known in the art, and it is not
clear what technical effect and purpose the learning of ontology serves"
and "All the features presented in the instant application are widely
recognised in the field and do not represent any notable technical
advancements and technical effect."
He submitted that the above findings were, in substance, considerations
germane to inventive step analysis under Section 2(1)(ja) of the Patents Act
and not as to the aspect of non-patentability under Section 3(k) of the Patents
Act. He pointed out that the Respondent had thereby conflated two distinct
enquiries and that the question of whether something was "well-known"
must be assessed in view of the cited prior art and not determined arbitrarily.
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9. He further submitted that an order must be reasoned in its entirety and that
a finding on one ground could not be a substitute for the absence of
reasoning on another. Furthermore, he placed reliance upon the CRI
Guidelines, 2025, to point out that the foremost criterion for examination of
a patent application was novelty and that an assessment of patentability
under Section 3 must not be made without first addressing 'novelty' and
'inventive step'.
10. Mr. Aryan then submitted that on the merits of the Section 3(k) objection of
the Patents Act, the claimed invention was patentable subject matter when
assessed as a whole, since Claim 1, which was an independent claim,
disclosed a method of retrieving relevant documents having medical
research evidence, implemented by an apparatus, and comprised the
following steps:
a. Receiving a request to access a plurality of documents in a database
stored in at least one memory device, each document containing
medical research evidence and having an associated pre-defined
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relational expression that defines a link between fields in a pre-
existing medical ontological hierarchy derived deductively from a
plurality of medical literature and separately mapped onto each
document;
b. Causing display of a user interface with a plurality of fields of the pre-
existing ontological hierarchy, certain fields having selectable,
prescribed terms;
c. Generating a received relational expression based on information
received from the user interface, including at least one selectable
prescribed term;
d. Comparing the received relational expression with the pre-defined
relational expressions associated with at least one of the plurality of
documents; and
e. Causing display of information relating to a set of documents as a
function of that comparison.
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11. He further submitted that the invention solved a technical problem, namely
the inefficiency of conventional medical literature databases that index
documents based on known standardised medical ontologies and keyword
searches. He pointed out that such conventional systems either returned
large volumes of irrelevant documents or omitted relevant articles that did
not contain the search keyword. He thus submitted that the technical
problem was the inefficient functioning of the database system as a whole
in returning the relevant documents.
12. Mr. Aryan then submitted that with regard to the technical solution, the
invention solved the above problem by means of a hardware controller that
created a unique "relational expression" for each document being added to
the database by deductively deriving an ontology from medical literature
and mapping it back to individual papers through a 'Boolean' or other
operators. Mr. Aryan pointed out that when a user query was submitted, a
hardware component generated a received relational expression from the
user interface, and a comparator, i.e., a distinct hardware component,
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compared it against the predefined relational expressions of stored
documents, thereby displaying the most relevant results. He reiterated that
this process enabled more effective and efficient indexing and search.
13. Mr Aryan, then, on the aspect of the technical effect, submitted that the use
of predefined relational expressions mapped onto each document reduced
the computational load required to identify relevant evidence, thereby
improving database querying efficiency and minimising the volume of data
a user must manually filter. He pointed out that the comparing step was a
technical comparison of structured relational expressions, not a simple
string match, yielding a concrete technical result in the form of a specific set
of documents, and this constituted a tangible technical benefit in the field of
healthcare technology.
14. Mr. Aryan further submitted that the CRI Guidelines, 2025, expressly
acknowledged that "technical implementation of efficient searching,
indexing, or retrieving data from databases that improve overall system
performance" does not constitute the excluded subject matter under Section
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3(k) of the Patents Act, and hence the same was patentable. He then also
placed reliance upon Examples 1 and 4 of the CRI Guidelines, 2025, and
submitted that these Guidelines also state that allowability under Section
3(k) of the Patents Act does not necessitate the presence of novel hardware.
15. Mr. Aryan then placed reliance upon the decision in the case of Microsoft
Technology Licensing, LLC v. Assistant Controller of Patents and
Designs4, to point out that a mere conclusion that claims were implemented
on a computer or comprise computer-executable instructions performed on
a general-purpose computing device was not a correct basis for refusing a
patent application.
16. Mr. Aryan pointed out that the Petitioners' corresponding US patent
application had been granted with claims of the exact same scope as those
which had been refused in India, notwithstanding the fact that the US Patent
Code under 35 U.S.C. §101 similarly excluded inventions directed to
2023 SCC OnLine Del 2772.
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abstract ideas. He reiterated that the grant of Patent in the US jurisdiction
was indicative of the patentable nature of the claimed invention
17. In light of the above facts and submissions, he submitted that the Petitioner's
valuable rights in pursuing a patent application over a breakthrough
invention for retrieving medical evidence documents from a database should
not be denied, and therefore, the Impugned Order should be set aside, and
the matter may be remanded back for de novo consideration.
Submissions on behalf of the Respondent:
18. Per contra Mr. Deshmukh, learned counsel appearing on behalf of the
Respondent, submitted that the Petitioner had filed a PCT National Phase
Application No. 2068/MUMNP/2014 on 16th October 2014, and after
examination under Sections 12 and 13 of the Patents Act, a First
Examination Report was issued on 4th March 2020, to which the Petitioner
had filed a reply. A hearing notice was thereafter issued on 5th March 2024,
pursuant to which the Petitioner appeared at the hearing held on 1st April
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2024 and thereafter filed written submissions and other documents. He,
however, pointed out that the application was refused on the grounds of lack
of inventive step under Section 2(1)(ja) in view of prior art D1, D2, and D3
and non-patentability under Section 3(k) of the Patents Act. He then, in
support of the contention that the Petitioners' Application had rightly been
rejected, made the following submissions.
I. Barred Subject matter under Section 3 of the Act
19. Mr. Deshmukh submitted that the impugned invention fell squarely within
the ambit of Section 3(k) of the Patents Act as being "a mathematical or
business method or a computer program per se or algorithms". He further
submitted that this ground alone was sufficient to justify the refusal of the
application and did not warrant a further assessment of novelty or
obviousness. In support of this contention, Mr. Deshmukh placed reliance
upon the decision of the Delhi High Court in Ferid Aliani v. Union of
India,5 in which the Delhi High Court applying the judicial test to ascertain
2019 SCC OnLine Del 11867.
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if an invention attracts Section 3(k), held that a computer-related invention
demonstrating a 'technical effect' or a 'technical contribution' is patentable
even though it may be based on a computer program.
20. Mr. Deshmukh, however, submitted that in the facts of the present case, the
impugned invention did not demonstrate any such technical effect or
technical contribution, as was evident from the complete specification,
since the claimed invention was purely algorithmic in nature, operating on
generic computer hardware without improving the internal functioning of a
computer or database, and the sole purported "technical effect" was the
generation of a "unique logical expression", which did not go beyond the
output of any ordinary algorithmic process. He then pointed out that in
Microsoft Technology Licensing v. Controller of Patents,6 the Delhi High
Court had laid down the conditions necessary for computer-related
inventions to circumvent the limitations imposed by Section 3(k) as follows:
2024 SCC OnLine Del 3239.
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33. Technical effect of the subject patent application
In light of the above discussion, it is clearly established that in
case of an invention involving computer programmes, to
circumvent the limitations imposed by Section (k) of the Act, a
patentee must demonstrate that the overall method and system
disclosed in the patent application, upon implementation in a
general-purpose computer, must contribute directly to a specific
and credible technical effect or enhancement beyond mere general
computing processes. Therefore, the inventive contribution of a
patent should not only improve the functionality of the system but
also achieve an innovative technical advantage that is clearly
defined and distinct from ordinary operations expected of such
systems.
21. Mr. Deshmukh also pointed out that the Delhi High Court in Blackberry Ltd
v. Controller Patents & Design7 had inter alia held that where an invention
incorporated an algorithm but related purely to a set of instructions
regulating information flow through conditional logic without any
substantial change in hardware, the invention in question was not entitled to
patent protection. He submitted that a technical contribution arising
primarily from an algorithmic process on generic hardware was insufficient
2024 SCC OnLine Del 6027.
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for the grant of a patent. He pointed out that the Delhi High Court had
rejected the Patent Application in the said case while upholding the
following findings of the Controller pertaining to Section 3(k), viz.
"58. Accordingly, in light of the analysis and findings presented in
this judgment, it is evident that while the subject patent application
has a technical contribution, the said contribution primarily arises out
of the use of an algorithmic process that regulates the flow of
information through a sequence of instructions. The claims, when
read in conjunction with the complete specification, clearly indicate
that the core functionality of the invention relies heavily on
conditional logic and procedural steps. As established, such
algorithmic processes fall under the exclusion criteria outlined in
Section 3(k) of the Patents Act, which disqualifies mathematical
methods, business methods, and computer programs per se from being
patentable subject-matter."
II. The impugned invention is barred under Section 3(k), i.e., being a
computer program per se and an algorithm.
22. Mr. Deshmukh then submitted that when the tests laid down in the case of
Ferid Allani v. Union of India and Blackberry Ltd. v. Controller Patents
& Design were applied to the impugned invention, and that the following
emerged from the complete specification, i.e., Form 2: (a) The field of the
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invention was algorithmic and not technical in nature; (b)The background
of the invention identified a non-technical problem faced by human
researchers in searching medical literature; (c) The impugned invention was
an algorithm run on generic computer hardware, including laptops and
mobile phones; (d) The technical effect described by the applicant itself was
merely a "unique logical expression"; and (e) The "relational expression"
claimed as the inventive step was purely algorithmic implementation, i.e.,
computer-readable program code, implemented through a predetermined,
step-by-step sequence of instructions on generic hardware.
23. Mr. Deshmukh further submitted that the Controller's findings in the
Impugned Order could be summarised as follows:
a. Lack of Inventive Step, i.e., Section 2(1)(ja), all key features of
Claims 1-24 were disclosed in the prior art. D1 disclosed database
systems for retrieving medical studies; D2 disclosed medical
information retrieval systems; and D3 disclosed semantic and
ontology-based matching of medical data and clinical trials. The
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method claimed in Claim 1 matched almost entirely with the teaching
of D3, with support from D1. The apparatus claim (Claim 21) was
considered a routine client-server computer system that was well-
known and obvious. Any differences over the prior art were minor
and non-technical, did not involve any technical ingenuity, and a
person skilled in the art could easily arrive at the claimed invention
from existing knowledge. Accordingly, Claims 1-24 were held to lack
an inventive step.
b. Non-Patentability, i.e., Section 3(k): The invention essentially
performed data processing, ontology learning, and comparison of
relational expressions, which were software algorithms, not technical
inventions. The "self-learned ontology" was a non-technical concept
already well-known in the art. The invention did not improve the
internal functioning of a computer or database and using hardware
components alone did not render a software-based solution
patentable. The claimed system did not demonstrate any real technical
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effect or technical contribution. The invention solved a non-technical
problem (how to search medical documents better) through a non-
technical, software-based solution and, accordingly, fell squarely
under the exclusion of "computer program per se" under Section 3(k).
24. Mr. Deshmukh accordingly submitted that the refusal of the application by
the Controller under Section 3(k) was both appropriate and justified and
submitted that the Petition be dismissed.
Submissions in Rejoinder:
25. Mr. Aryan, in rejoinder, submitted that the Respondent's reliance on the
decision of the Delhi High Court in Microsoft Technology Licensing, LLC
v. Assistant Controller of Patents and Designs8 was misplaced and, in fact,
supported the Petitioner's case since the Court had held that where
optimisation was applied in practical hardware configurations contributing
a clear technical effect of enhanced capabilities, the Impugned Order was
2024 SCC OnLine Del 3239.
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set aside. He further submitted that the reliance placed by the Respondent
on the decision of the Delhi High Court in the case of Blackberry was also
misplaced, as the invention therein related to a set of logical instructions
governing information flow through conditional logic characteristic of an
algorithm, which was not the character of the present invention.
Reasons and Conclusions:
26. Having heard learned counsel and having considered the pleadings and the
case law upon which reliance is placed, I find that the Petition would have
to be allowed, to the limited extent of remitting the matter back for
consideration afresh. I say so for the following reasons:
A. It is now well settled that the process for determining 'inventive step' has
been laid down by the Delhi High Court in the case of F. Hoffmann-La
Roche Ltd. v. Cipla Ltd. A perusal of the Impugned Order indicates
plainly that the aforesaid steps have not been followed and the
Respondent has concluded that Claims 1 to 24 lack 'inventive steps' in
view of prior art documents, i.e., D-1 to D-3. Crucially, however, the
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Impugned Order is bereft of any analysis as to how the said prior art
discloses or renders obvious the claimed invention.
B. Furthermore, the Impugned Order also does not undertake any
comparison of the Petitioner's invention with the cited prior art, nor does
it explain the manner in which a person skilled in the art could, on the
basis of the prior art cited, arrive at the claimed invention or make the
claimed invention obvious. In an inventive step analysis, it is not
sufficient for the examiner to cite prior art documents. It was necessary
for the Respondent to identify which features of the claimed invention
were taught by the prior art and thus obvious to a person skilled in the
art. This absence of reasoning/analysis, in my view, renders the
Impugned Order vulnerable to challenge and liable to be set aside, since
it is well settled that the reasons are the heart and soul of an order.
C. Furthermore, the Impugned Order also materially departs from the
objections communicated to the Petitioner in the hearing notice dated 5th
March, 2024. While the hearing notice indicated that the claims did not
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disclose structural or hardware features and were in the nature of a
computer program, the Impugned Order contains findings to the effect
that the Petitioner's invention pertains to a 'self-learned ontology' and is
therefore non-technical in nature. Such a finding was plainly beyond the
scope of the hearing notice, and thus, the Petitioner did not have the
opportunity to respond to such claims. Hence, there is material in the
contention that there has been a violation of the principles of natural
justice.
D. While the Respondent has placed reliance upon the decision in the case
of Blackberry to justify the Impugned Order by contending that since the
invention is merely a computer program per se and an algorithm which
can be implemented on generic hardware, such contention even if
correct, would not cure the defects noted at paragraphs (A), (B) and (C)
above.
E. Furthermore, the Petitioner has placed reliance upon the decision of the
Delhi High Court in the case of Microsoft Technology Licensing LLC
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to contend that the Petitioner's invention yields a technical effect in the
form of improved database retrieval efficiency and reduced
computational load, and thus such inventions are not barred under
Section 3(k). This is also a factor which would have to be specifically
examined and was not done in the present case.
27. Hence, for the aforesaid reasons:
i. The Impugned Order is set aside, and the matter is remanded back
for consideration afresh in accordance with the law. The Respondent
shall offer the Petitioner an opportunity for a hearing and thereafter
pass a reasoned order.
iii. It is clarified that this Order shall in no manner be construed to
mean that the Court has cast any aspersion upon the Respondent.
iii. The Petition is accordingly disposed of.
[ARIF S. DOCTOR, J.]
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