Summary
In a recent order dated 27th February 2025, the Madras High Court upheld the Controller’s refusal of Navya Network Inc.'s patent application. The Court found that the invention, related to a decision-support system for medical treatment options, was obvious to a person skilled in the art. It ruled that minor refinements like expert grading did not meet the inventive step requirement.
Introduction
This post discusses the order dated 27th February 2025, in Navya Network Inc. vs The Controller of Patents & Designs, wherein the Madras High Court decided an appeal filed by Navya Network Inc. against refusal of its patent application due to lack of inventive step under Section 2(1)(ja) and non-patentability under Section 3(k) of the Patents Act, 1970. The Court upheld the Controller’s decision to refuse the patent application, stating that the invention was obvious to a person skilled in the art (PSITA).
Facts
Navya Network Inc. (“Navya Network”) filed a patent application titled “Treatment related quantitative decision engine”, before the Indian patent office bearing number 951/CHENP/2013 on 6th February 2013. The application was eventually refused by the Patent Office under Sections 2(1)(ja) and 3(k) on the grounds that it was directed towards an algorithm, a computer program per se, and a business method, and for being obvious to a person skilled in the art.”
Independent claim 1:
- A method, for use with at least one processor on at least one computer, of generating a report to help decide among a plurality of treatment options for a patient with a given treatable medical condition, the method comprising:
- receiving (210), by a patient information receiving module, patient information (110) related to the patient and the medical condition;
- querying (220), by querying module, a treatment option database (235) to generate a plurality of potential treatment options for the medical condition;
- receiving (360), by a preference information receiving module, preference information (120) indicative of the patient’s preference for potential treatment outcomes of the treatment options to produce a preference value;
- analyzing (320), by an analysis module, indexed study data (130) relating to the plurality of treatment options by at least grading evidence within the indexed study data (130), wherein the indexed study data (130) is derived from scientific studies, each of which evaluates an effect of a different treatment option on different trial subjects who have a similar medical condition as the patient;
- producing (420), by a study score producing module, a study score for each of the treatment options based on the analysis of the indexed study data (130);
- determining, a treatment scoring module, for each distinct treatment option, a distinct treatment score as a function of at least the preference value and the study score corresponding to the distinct treatment option; and
- generating (370), by a reporting module, a report (150) listing the treatment options and a) the treatment scores or b) information derived from the treatment scores.
Navya Network’s arguments
Navya Network argued that the invention solved a technical problem and provided a technical effect. With regard to Section 3(k), Navya Network placed reliance on key judgments including Microsoft Technology Licensing v. Assistant Controller of Patents and Designs, 2023 SCC OnLine Del 2772, Open TV Inc. v. The Controller of Patents and Designs, 2023:DHC:3305, and Priya Randolph v. Deputy Controller of Patents, 2023:MHC:5450, and contended that:
- The claims cannot be rejected solely on the ground that the claims relate to computer executable instructions or algorithms that are performed on a general purpose computing device;
- An invention would be excluded as being a business method only if it is intended primarily to enable conduct or administration of a particular business and if the purpose of the invention is for claiming exclusivity or monopoly over a manner of doing business
Further, with respect to the rejection on the basis of lack of inventive step, Navya Network contended that the Controller had erred in identifying the persons skilled in the art and that the invention was more complex and provided a report based on the grading of the experts, which the prior art documents D1-D3 lacked.
Controller’s arguments:
The Controller argued that the patent application was primarily rejected on the ground of lack of inventive step. The Controller further contended that the patent application involved two steps: (1) collation of relevant information from patients, (2) evaluation of treatment options, and selecting the best treatment, and that the steps involved in the patent application were obvious in light of D3’s disclosure.
Analysis:
The Court began its analysis by highlighting important paragraphs from the Complete Specification to extract the crux of the invention. The Court noted that the invention was directed towards a computing system and method for generating a report which would help a patient to decide the best treatment option from a plurality of treatment options. The Court compared the teachings of D1-D3 with the claimed invention and then proceeded to determine whether the claimed invention was obvious to PSITA from the cited prior arts by analyzing the independent claims 1 and 14. The Court noted that, except for the quantitative analysis in terms of grading and scoring, all the other features of the claimed invention were present in the cited prior art.
The Court stated that “Even proceeding on the basis that prior arts D1 and D2 do not recite grading and ranking in respect of the experts, given the fact that they provide for a grading and scoring system in respect of medications and other treatment options, in my view, it would be obvious to a PSITA team, consisting of a software engineer and a medical expert, to arrive at the claimed invention on the basis of clear pointers in the said prior arts. Mere refining of the treatment score based on expert grading does not represent a technical advance over the prior arts and, in any event, would be obvious from cited prior arts to the PSITA team. Therefore, the claimed invention does not satisfy the requirements of Section 2(1) (ja) of the Patents Act. In view of the above, it becomes unnecessary to examine whether the claimed invention stands excluded from patent protection under Section 3(k) of the Patents Act.”
Conclusion and Decision:
The Court dismissed the appeal and upheld the refusal order of the Controller.
Citation: Navya Network Inc. vs. The Controller of Patents and Designs (CMA (PT) No.13 of 2024) Available on: https://indiankanoon.org/doc/116824910/
Post review by Gaurav Mishra
Accessibility review by Gaurav Mishra
