Summary
Navya Network Inc. sought to patent a "Medical Research Retrieval Engine" through the PCT national phase route in India, only to have the Controller of Patents refuse the application for lack of inventive step and as a computer program per se under Section 3(k). Before the Bombay High Court, Navya challenged the refusal on two fronts: the complete absence of reasoned analysis on inventive step against the cited prior art, and the introduction in the refusal order of a new Section 3(k) ground never raised at the hearing stage. The Court set aside the order and remanded the matter for fresh consideration, holding that a bare conclusion cannot substitute for the five-step inventive step test and that the material departure from the hearing notice violated the principles of natural justice. The ruling reinforces the Patent Office's obligation to provide reasoned, feature-wise analysis on inventive step and to confine its final orders to the objections actually communicated during the hearing.
In the case of Navya Network Inc. v. Assistant Controller of Patents and Designs, the Court set aside the refusal of a patent application and remanded the matter for fresh consideration. The Court held that the refusal order suffered from absence of reasoning, failure to apply the five-step inventive step test, and violation of principles of natural justice by introducing new grounds not communicated in the hearing notice.
Background
Navya Network Inc. filed a PCT national phase patent application in India bearing Application No. 2068/MUMNP/2014 for an invention titled “Medical Research Retrieval Engine”. The Controller rejected the application on grounds of lack of inventive step in view of prior art D1-D3 and non-patentability under Section 3(k) as an algorithm and computer program per se. Navya Network Inc. challenged this refusal before the Bombay High Court under Section 117A of the Patents Act. The challenge focused on the absence of reasoning for inventive step and the alleged change in the Section 3(k) objection between the hearing notice and the refusal order.
Issues before the Court
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- Whether the refusal order provided adequate reasoning and analysis for the finding of lack of inventive step under Section 2(1)(ja) in view of prior art D1-D3.
- Whether the Section 3(k) finding was procedurally sustainable.
- Whether the refusal order violated principles of natural justice and required remand for fresh consideration.
Arguments Presented by the Parties
Arguments of the Appellant (Navya Network Inc.)
On inventive step, Navya Network Inc. argued that the Patent Office merely reproduced Claim 1 and concluded that the claims lacked inventive step. It argued that the order did not explain how the combination of D1 to D3 taught the claimed invention. It also argued that the Patent Office did not apply the five-step test for obviousness stated in F. Hoffmann La Roche Ltd. v. Cipla Ltd. and later reaffirmed in Tapas Chatterjee v. Assistant Controller of Patents and Designs.
On Section 3(k), Navya Network Inc. argued that the hearing notice said claims did not define structural or hardware features and defined computer programs. However, the refusal order introduced a new reason that the invention provided a “self-learned ontology”, which was non-technical and merely a computer algorithm. Navya Network Inc. argued that this new reasoning was not put to it before the refusal. Navya Network Inc. further argued that the invention solved a technical problem in conventional medical literature databases. It said that such databases returned irrelevant results or missed relevant papers. It argued that the claimed relational expressions, hardware controller, comparator, and database retrieval process improved search efficiency and reduced computational load.
Arguments of the Respondent (Assistant Controller of Patents)
The Controller argued that the application was rightly refused. It submitted that the claimed invention operated on generic hardware and did not improve the internal functioning of a computer or database. It also argued that the alleged technical effect was only the generation of a unique logical expression. The Controller asserted that the Section 3(k) bar was self-sufficient to justify refusal and did not require a separate analysis of novelty or inventive step.
Court’s Observations and Analysis
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On Inventive Step
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The Court observed that the refusal order did not follow the five-step test for inventive step as laid down in F. Hoffmann La Roche Ltd. v. Cipla Ltd. According to the Court, the Controller concluded that the claims lacked inventive step in view of prior art documents D1 to D3, but the order did not analyse how the prior art disclosed or rendered obvious the claimed invention. The court also said that the order did not explain how a person skilled in the art could arrive at the claimed invention or make it obvious based on the cited prior art. The court stated that the Patent Office had to identify which features of the claimed invention were taught by the prior art and why those features were obvious to a person skilled in the art.
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On Section 3(k) and violation of natural justice
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The Court noted that Navya Network Inc. had argued that the invention yielded a technical effect through improved database retrieval efficiency and reduced computational load, and that such inventions are not barred under Section 3(k). The Court said that this factor had to be specifically examined, and that the Controller had not done so in the present case. The Court stated that the refusal order materially departed from the objections communicated in the hearing notice. According to the Court, the hearing notice indicated that the claims did not disclose structural or hardware features and were in the nature of a computer program. However, the refusal order contained findings that the invention related to a “self-learned ontology” and was therefore non-technical. The Court observed that this finding was beyond the scope of the hearing notice and that Navya Network Inc. did not get an opportunity to respond to those findings. The Court therefore accepted that there was material in the contention that principles of natural justice had been violated.
The Court also dealt with the Controller’s reliance on Blackberry Ltd. v. Controller Patents and Designs. The Court said that even if the contention that the invention was a computer program per se and an algorithm implemented on generic hardware was correct, that would not cure the defects in the refusal order. The defects were the lack of inventive step analysis, the absence of feature-wise comparison with the prior art, and reliance on Section 3(k) grounds beyond the hearing notice.
Conclusion
The Court set aside the impugned order refusing the patent application and remanded the matter to the Patent Office for fresh consideration in accordance with the law. The Court directed the Patent Office to give Navya Network Inc. an opportunity for a hearing and to pass a reasoned order after the hearing. The Court also clarified that the order should not be construed as casting any aspersion on the Patent Office.
Case Citation
Navya Network Inc. v. Assistant Controller of Patents and Designs, Commercial Miscellaneous Petition (L) No. 15327 of 2025, Bombay High Court, decided on 15 April 2026.
Article review and accessibility review: Gaurav Mishra