Navya Network Inc. v. Assistant Controller of Patents and Designs

High Court of Judicature at Bombay | Commercial Division | 15 April 2026 Case Number: Commercial Miscellaneous Petition (L) No. 15327 of 2025 Bench: Hon’ble Mr. Justice Arif S. Doctor Citation: 2026:BHC-OS:9481

BACKGROUND

The petitioner, Navya Network Inc., filed the present petition under Section 117A of the Patents Act, 1970, challenging the order dated 27th May 2024 passed by the respondent, the Assistant Controller of Patents and Designs, refusing the petitioner’s Patent Application No. 2068/MUMNP/2014 titled “Medical Research Retrieval Engine.” The application was a PCT national phase application claiming priority from US Application No. 13/428,539 dated 23rd March 2012. The PCT national phase application was filed on 16th October 2014.

After examination under Sections 12 and 13 of the Patents Act, the First Examination Report was issued on 4th March 2020, to which the petitioner filed a reply. A hearing notice was thereafter issued on 5th March 2024, pursuant to which the petitioner appeared at a hearing held on 1st April 2024 and thereafter filed written submissions and other documents. The respondent passed the impugned order on 27th May 2024 refusing the application on two grounds: first, lack of inventive step under Section 2(1)(ja) of the Patents Act in view of prior art documents D1, D2 and D3; and second, non-patentability under Section 3(k) of the Patents Act on the ground that the claimed invention constitutes an algorithm and computer program per se.

The subject invention concerned a method, implemented by an apparatus, for retrieving relevant documents containing medical research evidence from a database. Independent Claim 1 disclosed the steps of: 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 relational expression that defines a link between fields in a pre-existing medical ontological hierarchy derived deductively from medical literature and separately mapped onto each document; causing display of a user interface with a plurality of fields of the pre-existing ontological hierarchy, certain fields having selectable, prescribed terms; generating a received relational expression based on information received from the user interface, including at least one selectable prescribed term; comparing the received relational expression with the pre-defined relational expressions associated with at least one of the documents; and causing display of information relating to a set of documents as a function of that comparison.

The petitioner’s case was that the invention addressed a technical problem, namely the inefficiency of conventional medical literature databases that index documents based on known standardised medical ontologies and keyword searches, such conventional systems either returning large volumes of irrelevant documents or omitting relevant articles that did not contain the search keyword. The petitioner contended that the invention solved this problem by means of a hardware controller that created a unique “relational expression” for each document added to the database by deductively deriving an ontology from medical literature and mapping it back to individual papers through Boolean or other operators and that when a user query was submitted, a hardware component generated a received relational expression from the user interface and a comparator described as a distinct hardware component compared it against the predefined relational expressions of stored documents, thereby displaying the most relevant results. The petitioner submitted that this yielded a technical effect of reduced computational load and improved database querying efficiency, constituting a comparison of structured relational expressions rather than a simple string match.

It is noted that the petitioner, while responding to the hearing notice, had amended Claims 1-24 to incorporate hardware features and had filed written submissions addressing the objections raised in the hearing notice.

ISSUES FOR DETERMINATION

1. The first issue before the Court was whether the respondent, in finding that Claims 1-24 of the petitioner’s application lacked inventive step under Section 2(1)(ja) of the Patents Act in view of prior art documents D1, D2 and D3, had followed the mandatory five-step test for assessing inventive step laid down by the Delhi High Court in F. Hoffmann-La Roche Ltd. v. Cipla Ltd., 2015 SCC OnLine Del 13619 and reaffirmed by the Division Bench of the Delhi High Court in Tapas Chatterjee v. Assistant Controller of Patents and Designs and Anr., 2025 SCC OnLine Del 6369 and whether the impugned order contained any reasoning or analysis as to how the cited prior art disclosed or rendered obvious the claimed invention.
2. The second issue was whether the respondent, in refusing the application under Section 3(k) of the Patents Act on the ground that the claimed invention provided a “self-learned ontology” that was non-technical and merely a computer algorithm, had introduced a new ground of objection in the impugned order that had not been communicated to the petitioner either in the First Examination Report or in the hearing notice dated 5th March 2024 which had instead objected only on the basis that Claims 1-24 did not define any structural or hardware features and defined computer programs and whether such introduction of a new, previously uncommunicated ground constituted a violation of the principles of natural justice.
3. The third issue was whether the respondent had impermissibly conflated the distinct statutory inquiries under Section 2(1)(ja) (inventive step) and Section 3(k) (non-patentability of computer programs per se and algorithms), by relying on findings such as that “the concept of ontology learning is well known in the art” and that “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” that were, in substance, considerations germane to inventive step analysis rather than to the question of patentable subject matter under Section 3(k).
4. The fourth issue was whether, on the merits, the claimed invention assessed as a whole, including its technical problem, technical solution and technical effect demonstrated a technical contribution sufficient to take it outside the exclusion under Section 3(k) of the Patents Act for “a mathematical or business method or a computer program per se or algorithms,” applying the tests laid down in Ferid Allani v. Union of India, 2019 SCC OnLine Del 11867, Microsoft Technology Licensing, LLC v. Assistant Controller of Patents and Designs, 2023 SCC OnLine Del 2772, Microsoft Technology Licensing v. Controller of Patents, 2024 SCC OnLine Del 3239 and Blackberry Ltd. v. Controller Patents & Design, 2024 SCC OnLine Del 6027 and applying the CRI (Computer Related Inventions) Guidelines, 2025.
5. The fifth issue was the appropriate remedy where these infirmities were established.

KEY HOLDINGS OF THE COURT

1. On the inventive step analysis under Section 2(1)(ja), the Court held that it is now well settled that the process for determining inventive step has been laid down by the Delhi High Court in F. Hoffmann-La Roche Ltd. v. Cipla Ltd. A perusal of the impugned order indicated plainly that the steps laid down in that decision had not been followed and that the respondent had concluded that Claims 1 to 24 lacked inventive step in view of prior art documents D1 to D3 without any analysis as to how the said prior art disclosed or rendered obvious the claimed invention. The Court held that it is not sufficient for an examiner merely to cite prior art documents in an inventive step analysis; it is necessary to identify which features of the claimed invention are taught by the prior art and thus would be obvious to a person skilled in the art. The Court held that this absence of reasoning and analysis rendered the impugned order vulnerable to challenge and liable to be set aside, on the established principle that reasons are the heart and soul of an order.
2. The Court held that the impugned order also did not undertake any comparison of the petitioner’s invention with the cited prior art, nor did it explain the manner in which a person skilled in the art could, on the basis of the cited prior art, arrive at the claimed invention or find the claimed invention obvious. This further compounded the absence of reasoning identified above.
3. On the natural justice ground, the Court held that the impugned order materially departed from the objections communicated to the petitioner in the hearing notice dated 5th March 2024. While the hearing notice had indicated only that the claims did not disclose structural or hardware features and were in the nature of a computer program, the impugned order contained findings to the effect that the petitioner’s invention pertained to a “self-learned ontology” and was therefore non-technical in nature a finding plainly beyond the scope of the hearing notice. The Court held that the petitioner did not have an opportunity to respond to such a new ground and that there was therefore material substance in the contention that there had been a violation of the principles of natural justice.
4. The Court rejected the respondent’s submission, based on the decision in Blackberry Ltd. v. Controller Patents & Design, that the invention being a computer program per se and algorithm implementable on generic hardware was, by itself, sufficient justification for the impugned order. The Court held that even if this contention were correct on its merits, it would not cure the three defects identified above namely, the absence of inventive step analysis, the absence of any comparison between the claimed invention and the prior art and the introduction of a new ground not communicated in the hearing notice.
5. The Court found that the petitioner’s reliance on Microsoft Technology Licensing LLC v. Assistant Controller of Patents and Designs, 2023 SCC OnLine Del 2772, to contend that the petitioner’s invention yielded a technical effect in the form of improved database retrieval efficiency and reduced computational load such that the invention was not barred under Section 3(k) was a factor that would have to be specifically examined and that this examination had not been undertaken in the impugned order.
6. For these reasons, the Court held that the petition would have to be allowed to the limited extent of remitting the matter back for consideration afresh. The impugned order was set aside and the matter was remanded for fresh consideration in accordance with law, with a direction that the respondent shall offer the petitioner an opportunity for a hearing and thereafter pass a reasoned order. The Court clarified that the order should in no manner be construed to mean that the Court had cast any aspersion upon the respondent. The petition was accordingly disposed of.

STATUTORY PROVISIONS INVOLVED

Section 2(1)(ja) of the Patents Act, 1970 defines “inventive step” as 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. The impugned order had refused Claims 1-24 on the ground that this requirement was not met in view of prior art documents D1, D2 and D3. The Court held that the respondent’s analysis under this provision was deficient because it failed to follow the mandatory five-step test laid down in F. Hoffmann-La Roche Ltd. v. Cipla Ltd. and contained no comparison between the claimed invention and the cited prior art.

Section 3(k) of the Patents Act, 1970 provides that “a mathematical or business method or a computer programme per se or algorithms” are not inventions within the meaning of the Act and are therefore not patentable. The impugned order had also refused the application on this ground, finding that the claimed invention performed data processing, ontology learning and comparison of relational expressions, which were software algorithms rather than technical inventions, that the “self-learned ontology” was a non-technical concept already well known in the art and that the invention did not improve the internal functioning of a computer or database. The Court found that the introduction of the “self-learned ontology” reasoning for the first time in the final order, without prior notice to the petitioner in the hearing notice, violated principles of natural justice and that the respondent’s reasoning under this provision had also impermissibly drawn upon considerations more properly belonging to the inventive step analysis under Section 2(1)(ja).

Section 117A of the Patents Act, 1970 provides for an appeal/petition to the High Court against decisions, orders or directions of the Controller, including refusal of a patent application. The present petition was filed under this provision challenging the refusal of the petitioner’s application.

Sections 12 and 13 of the Patents Act, 1970 govern the examination of patent applications by the Controller, including reference to an examiner and consideration of the examiner’s report. The petitioner’s application was examined under these provisions, resulting in the First Examination Report dated 4th March 2020.

REASONING OF THE COURT

The Court’s reasoning proceeded through a structured identification of cumulative deficiencies in the impugned order, each of which independently or collectively justified setting the order aside and remanding the matter.

The Court began with the settled legal position on inventive step analysis, observing that the five-step test from F. Hoffmann-La Roche Ltd. v. Cipla Ltd. is well established and binding, having been reaffirmed by a Division Bench of the Delhi High Court in Tapas Chatterjee. Applying this settled framework to the facts, the Court found, on a plain reading of the impugned order, that none of the analytical steps required by this test had been undertaken. The respondent had simply asserted that the prior art documents D1 to D3 disclosed the claimed features and concluded that the claims lacked inventive step, without identifying which specific features of the claimed invention were taught by which prior art document and without explaining the inferential path by which a person skilled in the art would have arrived at the claimed invention from the cited prior art. The Court treated this absence of demonstrated reasoning as fatal, applying the broader administrative law principle that reasons constitute the heart and soul of any order a principle of particular importance in patent refusal orders, which determine valuable property rights and must be capable of being tested on appeal.

The Court then turned to the natural justice dimension of the Section 3(k) objection. Here the Court’s reasoning was straightforward: an applicant is entitled to know, at the stage of the hearing notice, the precise grounds upon which an application may be refused, so that it has a genuine opportunity to respond before a final decision is taken. The hearing notice in this case had confined the Section 3(k) objection to the absence of structural or hardware features in the claims. The introduction, in the final order, of an entirely new analytical basis that the invention’s “self-learned ontology” was a non-technical and well-known concept went beyond what had been flagged and the petitioner could not be expected to have anticipated and addressed this specific characterisation in its written submissions or at the hearing. This shift in the basis for the Section 3(k) objection, occurring only in the final order, was found to amount to a denial of a fair opportunity to be heard on the actual ground relied upon for refusal.

The Court also engaged with the petitioner’s argument that the respondent had conflated the Section 2(1)(ja) and Section 3(k) inquiries by relying, in the Section 3(k) analysis, on findings that something was “well known in the art” or did not represent “notable technical advancements” findings the Court implicitly recognised as more naturally belonging to an inventive step (novelty/obviousness) analysis assessed against specific prior art, rather than to the conceptually distinct inquiry of whether the claimed subject matter, taken as a whole, falls within the excluded categories of mathematical methods, business methods, computer programs per se or algorithms. While the Court did not elaborate at length on this point as an independent ground, it is implicit in the Court’s overall reasoning that the absence of rigour in distinguishing between these two inquiries contributed to the overall conclusion that the order’s reasoning was inadequate.

Finally, the Court addressed the respondent’s reliance on Blackberry Ltd. v. Controller Patents & Design for the proposition that an invention reducible to an algorithmic process implementable on generic hardware is, for that reason alone, excluded under Section 3(k). The Court’s response to this submission was significant: even assuming this legal proposition to be correct as a matter of principle, it could not retrospectively cure the specific procedural and reasoning defects already identified in the impugned order namely the absence of inventive step analysis, absence of prior art comparison and the unnotified shift in the Section 3(k) ground. In other words, a correct ultimate legal conclusion cannot substitute for the reasoned process by which a quasi-judicial authority is required to arrive at that conclusion and the question of whether the invention does in fact yield a technical effect (as the petitioner contended, relying on Microsoft Technology Licensing) was a question requiring specific examination that the respondent had not undertaken.

Having identified these cumulative defects, the Court did not consider it appropriate to determine for itself, on the merits, whether the invention possessed inventive step or fell within the Section 3(k) exclusion. Instead, recognising that these were factual and technical determinations properly within the remit of the Patent Office in the first instance, the Court remanded the matter for fresh consideration, with directions for a fresh hearing and a reasoned order.

DOCTRINAL SIGNIFICANCE

This judgment makes a useful contribution to the growing body of Indian jurisprudence on the proper conduct of patent examination proceedings, particularly in relation to computer-related inventions and the interplay between the inventive step inquiry under Section 2(1)(ja) and the patentable-subject-matter exclusion under Section 3(k) of the Patents Act, 1970.

The most significant doctrinal contribution is the Bombay High Court’s express adoption and application of the five-step test for inventive step articulated by the Delhi High Court in F. Hoffmann-La Roche Ltd. v. Cipla Ltd. and reaffirmed in Tapas Chatterjee. This confirms that the five-step framework is not confined to the Delhi High Court’s jurisdiction but represents a settled, generally applicable standard for inventive step analysis across Indian patent jurisprudence, including before the Bombay High Court in its capacity as a forum for Section 117A appeals following the transfer of jurisdiction from the erstwhile Intellectual Property Appellate Board.

The judgment also makes an important contribution on the natural justice front specific to computer-related invention cases: it establishes that where a hearing notice frames a Section 3(k) objection on one specific basis (such as absence of hardware features), the Controller cannot, in the final order, pivot to an entirely different analytical basis (such as the non-technical character of a “self-learned ontology”) without first communicating this new ground to the applicant and affording an opportunity to respond. This reinforces and extends the principle already well established in pharmaceutical and chemical patent cases through decisions such as Otsuka Pharmaceutical and Perkinelmer Health into the domain of computer-related inventions, confirming its general applicability across all technical fields.

The judgment’s treatment of the respondent’s reliance on Blackberry Ltd. is also instructive: it establishes that a legally correct ultimate conclusion regarding the character of an invention as an unpatentable algorithm cannot cure the absence of the analytical process by which that conclusion must properly be reached. This guards against a risk that respondents in patent litigation might otherwise argue that procedural or reasoning deficiencies are immaterial so long as the ultimate substantive outcome can be independently justified a risk the Court firmly closed off in this judgment by remanding rather than upholding the order on the alternative basis offered by the respondent’s counsel.

The judgment also reflects the increasing engagement of Indian courts with the CRI (Computer Related Inventions) Guidelines, 2025 and with the line of decisions Ferid Allani, the two Microsoft Technology Licensing decisions and Blackberry that collectively elaborate the “technical effect” and “technical contribution” tests for assessing patentability of computer-implemented inventions under Section 3(k). While the Court did not, in this case, definitively resolve whether the petitioner’s invention meets that standard, the judgment confirms that this assessment requires a specific, evidence-based and properly reasoned examination assessing the technical problem, the technical solution and the technical effect of the claimed invention as a whole rather than a conclusory characterisation of the invention as “merely algorithmic.”

The judgment must be read as a remand order confined to procedural and reasoning deficiencies. The Court did not determine and expressly declined to determine, whether the petitioner’s invention does or does not possess inventive step or whether it does or does not fall within the Section 3(k) exclusion. All such questions remain open for fresh determination by the Assistant Controller of Patents and Designs after a fresh hearing.

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