This case involves an appeal by Navya Network Inc. against the rejection of its patent application for an invention titled "Treatment Related Quantitative Decision Engine." The appeal was filed under Section 117A of the Patents Act, 1970, challenging the rejection order passed by the Controller of Patents and Designs on 13th March 2023. The key legal issues revolved around the assessment of novelty, inventive step, and exclusions under Section 3(k) of the Patents Act.

Factual Background:
Navya Network Inc. filed an Indian patent application (No.951/CHENP/2013) for a system and method aimed at facilitating medical treatment decisions through a computer-based quantitative decision engine. The invention involved patient data analysis, expert feedback incorporation, and ranking treatment options using scoring mechanisms.

The First Examination Report (FER) dated 21.11.2019 raised objections on multiple grounds, including lack of novelty, absence of inventive step, exclusion under Section 3(k) (computer programs and business methods), and lack of clarity under Section 10(5) of the Patents Act. The appellant submitted responses and amendments, leading to a final rejection in March 2023.

Procedural Background:
FER Issued (21.11.2019): Initial objections citing lack of novelty and inventive step. Response to FER (21.08.2020): Submission of amended claims addressing concerns. Hearing Notice (13.12.2021): Request for further clarifications from the appellant. Written Submissions (22.02.2022): Submission of 28 amended claims. Final Rejection (13.03.2023): Rejection on the grounds of lack of inventive step and ineligibility under Section 3(k). Appeal to High Court: Challenge to the rejection, leading to this judgment.

Issues Involved in the Case:
Whether the invention lacked novelty and an inventive step under Section 2(1)(j) and 2(1)(ja) of the Patents Act? Whether the invention was excluded under Section 3(k) as a computer program per se or a business method? Whether the rejection properly evaluated the role of expert input in the claimed system?

Appellant's Submissions:
The claims should not be rejected solely because they involve computer-executable instructions. The invention provides a technical effect by improving decision-making in medical treatment, which goes beyond a mere algorithm. The exclusion under Section 3(k) applies only if there is no technical effect; the present invention enhances the efficiency of treatment selection. Prior art references (D1, D2, and D3) cited by the Controller of Patents do not disclose or make obvious the claimed invention. The rejection was flawed in its identification of the Person Skilled in the Art (PSITA), as it should have included a medical expert. The Delhi High Court precedents in Microsoft Technology Licensing v. Assistant Controller of Patents and Designs and Open TV Inc. v. The Controller of Patents and Designs support the argument that technical improvements should be patentable.

Respondent's Submissions:
The invention lacks an inventive step as it merely combines known techniques from prior arts (D1, D2, and D3). The claimed method consists of known steps: collecting patient data, selecting treatment options, and ranking them, which are obvious extensions of prior arts. The addition of expert ranking does not confer a technical advance over existing technologies. The invention falls under the exclusion of Section 3(k) as a business method and computer program.

Discussion on Judgments Cited:
Microsoft Technology Licensing v. Assistant Controller of Patents and Designs (2023 SCC OnLine Del 2772): The Delhi High Court held that claims cannot be rejected solely because they involve algorithms if they result in a technical effect. This case was cited by the appellant to argue that its invention produces a technical effect in medical decision-making.

Open TV Inc. v. Controller of Patents and Designs (2023:DHC:3305): The court clarified that an invention is excluded as a business method only if it primarily facilitates business administration. The appellant used this to argue that their system improves medical decisions, not business operations.

Priya Randolph v. Deputy Controller of Patents (2023: MHC:5450): The Madras High Court in this case ruled that mere involvement of a computer does not make an invention ineligible under Section 3(k). The appellant relied on this case to assert that their invention was more than a mere computer program.

Reasoning and Analysis of Judge:
The court examined whether the claimed invention was obvious in light of prior arts (D1, D2, and D3). Prior art D3 disclosed similar treatment recommendation systems with patient interaction. Prior art D2 introduced ranking and scoring mechanisms for treatment options. Prior art D1 described hierarchical ranking of treatment choices based on patient preferences. Since all essential features of the claimed invention were already known, the combination was deemed obvious to a PSITA. The alleged improvement (expert grading) was not considered a technical advancement. The court concluded that the invention lacked an inventive step under Section 2(1)(ja) and dismissed the appeal without examining Section 3(k).

Final Decision:
The appeal was dismissed, and the rejection of the patent application was upheld. No costs were imposed.

Law Settled in this Case:
An invention must demonstrate a significant technical advance over prior arts to be patentable under Section 2(1)(ja). Mere refinement of known methods, such as ranking and scoring treatment options, does not establish an inventive step. A PSITA in medical and software fields would find a combination of known techniques obvious. The assessment of inventive step requires careful comparison with prior arts rather than reliance on technical effect arguments. If all features of a claimed invention are disclosed or suggested by prior arts, it lacks patentability.

Case Title: Navya Network Inc. v. Controller of Patents
Date of Order: 27.02.2025
Case No.: CMA (PT) No.13 of 2024
Neutral Citation: 2025:MHC:538
Name of Court: High Court of Judicature at Madras
Name of Judge: Hon'ble Mr. Justice Senthilkumar Ramamoorthy

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539