Safiya Malik

The Madras High Court has dismissed an appeal challenging the rejection of a patent application by the Controller of Patents, holding that the claimed invention lacked enablement, clarity, and a definitive scope. The Court found that the appellant, Caleb Suresh Motupalli, failed to establish that the invention met the statutory requirements under the Patents Act, 1970. The Court also noted that the patent application did not demonstrate a technical effect sufficient to overcome the restrictions imposed by Section 3(k) of the Act, which excludes computer programs per se from patentability.

The appeal arose from an order passed by the Controller of Patents on October 27, 2021, rejecting the appellant’s patent application (Indian Patent Application No. 5606/CHENP/2012). The application was filed as a national phase entry of a Patent Cooperation Treaty (PCT) application (PCT/IN2010/000669) dated October 8, 2010, which claimed priority from U.S. Application No. 61/290,104, dated December 24, 2009. The invention was titled "Necktie Persona-Extender/Environment-Integrator and Method for Super-Augmenting a Persona to Manifest a Pan-Environment Super-Cyborg."

The First Examination Report (FER) was issued on August 30, 2018, raising objections under various provisions of the Patents Act, including Section 2(1)(j) (inventive step and industrial applicability), Section 3(k) (computer programs), Section 3(m) (methods of mental act), and Sections 10(4) and 10(5) (lack of enablement, clarity, and conciseness). In response, the appellant amended the claims and deleted certain claims. However, the Controller maintained objections, leading to a final refusal of the application on April 21, 2021.

Aggrieved, the appellant filed a review petition under Sections 77(1)(f) and 77(1)(g) of the Patents Act, seeking reconsideration. After a second hearing and further submissions, the Controller issued an order on October 27, 2021, reaffirming the rejection on grounds of lack of enablement, lack of definitive scope, and non-patentability under Sections 3(k) and 3(m). The present appeal before the High Court challenged this decision.

The Madras High Court examined whether the appellant’s claims met the statutory requirements under the Patents Act. The Court first considered whether the appellant’s invention was sufficiently disclosed as required under Section 10(4)(a) of the Act. The Court observed: "In consonance with the patent bargain, Section 10(4)(a) requires the specification to describe the claimed invention and its method of operation in full to enable a person skilled in the art to work the invention in exchange for the monopoly granted during the patent term."

The Court noted that the appellant’s claims relied on concepts such as "persona extension," "black-box modernization," and "labourspace integration," but the specification did not sufficiently describe how these concepts could be practically implemented. The Court further stated: "A fair reading of the complete specification does not lay bare the purported working and usage of the claimed techniques. Absent such teachings, and with the techniques not being common general knowledge for persona extension and augmentation, undue experimentation requiring the use of inventive faculty is necessary to achieve the promised result."

Regarding Section 10(5), which mandates clarity and conciseness in claims, the Court found that the claims were overly complex and lacked a clear technical definition. The Court remarked: "The impugned order has rejected the application under Section 10(5) on the ground that claims are lengthy, vague, and do not represent a technical characteristic. In addition to the unintelligible wording of the claims and the specification, the definitions provided for persona-extension, augmentation, and black-box modernization do not represent a workable embodiment for achieving the subject matter of the invention."

The Court also examined the issue of patentability under Section 3(k), which excludes computer programs per se from being patented unless they produce a technical effect. The Court cited its own precedent in Microsoft Licensing Technology LLC v. Assistant Controller of Patents and stated: "If the claimed invention has a technical effect, improves the functioning and efficacy of the system, and has an effect on hardware, it would surmount the prohibition under Section 3(k). However, the claimed invention does not possess any technical effect, much less any impact on hardware, and thus fails to attain the promised result of super-augmentation of the user."

The Court also noted that several elements of the claimed invention were already disclosed in prior art, including WO2001035208A1 and US20040030741A1. The appellant’s reliance on black-box modernization and object-oriented design techniques did not amount to an inventive step, as these concepts were already known. The Court observed: "The appellant has merely coalesced the disclosures and discussions in patent and non-patent literature, which largely relate to harnessing AI capabilities for advancing human operations, to arrive at the claimed invention. The claimed invention fails the test of inventive step under Section 2(1)(ja) of the Patents Act."

The High Court held that the appellant’s appeal was not maintainable under Section 117-A of the Patents Act, as it challenged an order issued under Section 77(1)(f), which does not provide for an appeal. The Court stated: "Section 117-A provides for appeals against specific orders of the Controller listed under Sub-section 2. Section 77(1)(f) is conspicuous by its absence, indicating that no statutory appellate remedy is provided for against an order-in-review issued under this provision. Therefore, the present appeal is liable to be dismissed at the threshold as not maintainable under Section 117-A of the Patents Act."

Without prejudice to this finding, the Court proceeded to examine the merits of the case and concluded that the Controller’s order did not warrant interference. It stated: "Even if the appeal were to be construed as an appeal against an order-in-original under Section 15 of the Patents Act, no interference would be warranted in view of the findings on enablement, clarity, and patentability."

Accordingly, the Court dismissed the appeal without costs.

Case Title: Caleb Suresh Motupalli v. Controller of Patents
Case Number: C.M.A. (PT) No. 2 of 2024
Bench: Justice Senthilkumar Ramamoorthy

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