Bombay High Court Allows Petition Challenging Patent Refusal for Lack of Reasoning on Inventive Step. The Court held that the Assistant Controller's order lacked any reasoning as to how the claimed invention was taught by prior art and failed to apply the five-step test for inventive step under Section 2(1)(ja) of the Patents Act, 1970.

High Court: Bombay High Court Bench: BOMBAY In Favour of Accused

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2026-05-18 23:19:24

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Case Note & Summary

The petitioner, Navya Network Inc., filed a petition under Section 117A of the Patents Act, 1970, challenging the order dated 27th May 2024 passed by the Assistant Controller of Patents and Designs, refusing its patent application No. 2068/MUMNP/2014 titled 'Medical Research Retrieval Engine', a PCT national phase application claiming priority to US Application No. 13/428,539 dated 23rd March 2012. The application was refused on two grounds: (i) lack of inventive step under Section 2(1)(ja) of the Patents Act in view of prior art documents D1-D3; and (ii) non-patentability under Section 3(k) on the ground that the claimed invention constitutes an algorithm and computer program per se. The petitioner, through its counsel Mr. Manish Aryan, submitted that the Impugned Order contained no reasoning whatsoever as to how the claimed invention was taught by a combination of D1-D3. The Respondent merely reproduced Claim 1 of the Application and baldly held that the claim lacked inventive step without any reasoning or basis to support such a finding. It was further submitted that the Respondent failed to follow the five-step test as laid down by the Delhi High Court in F. Hoffmann La Roche Ltd. v. Cipla Ltd. for assessing inventive step. The Court, after hearing the submissions, found that the Impugned Order indeed lacked any reasoning and failed to apply the five-step test. Consequently, the Court allowed the petition, set aside the Impugned Order, and remanded the matter back to the Respondent for fresh consideration in accordance with law. The Court directed the Respondent to pass a reasoned order after giving the petitioner an opportunity of being heard.

Headnote

A) Patent Law - Inventive Step - Section 2(1)(ja) Patents Act, 1970 - Requirement of Reasoning - The Assistant Controller's order merely reproduced Claim 1 and baldly held that the claim lacked inventive step without any reasoning or basis to support such a finding. The Court held that the order failed to apply the five-step test for obviousness as laid down in F. Hoffmann La Roche Ltd. v. Cipla Ltd. and thus the finding of lack of inventive step was unsustainable. (Paras 3-4)

B) Patent Law - Non-Patentability - Section 3(k) Patents Act, 1970 - Computer Program Per Se - The Impugned Order also refused the application on the ground that the claimed invention constituted an algorithm and computer program per se. However, the Court did not address this ground in the judgment as the petition was allowed on the first ground. (Para 2)

Issue of Consideration

Whether the Impugned Order refusing the patent application on grounds of lack of inventive step under Section 2(1)(ja) and non-patentability under Section 3(k) of the Patents Act, 1970, is sustainable when it contains no reasoning as to how the claimed invention was taught by prior art documents and fails to apply the five-step test for obviousness.

Final Decision

The Court allowed the petition, set aside the Impugned Order dated 27th May 2024, and remanded the matter back to the Respondent for fresh consideration in accordance with law. The Respondent was directed to pass a reasoned order after giving the petitioner an opportunity of being heard.

Law Points

Patent law
Inventive step
Section 2(1)(ja) Patents Act
1970
Section 3(k) Patents Act
Five-step test for obviousness
Reasoning requirement in patent refusal orders

Case Details

2026 LawText (BOM) (04) 88

Commercial Miscellaneous Petition (L) No. 15327 of 2025

2026-04-15

Arif S. Doctor, J.

Mr. Manish Aryan (through VC), a/w. Mr. Abhai Pandey, Ms. Manisha Singh, Mr. Nishant Rai, Ms. Khushi Chauhan, Ms. Shweta Nisar i/b. SONAL DOSHI & CO. for Petitioner; Mr. Yashodeep Deshmukh a/w. Mr. Ashutosh Mishra, Ms. Vaidehi Pradeep, Ms. Rutwik Rao, Mr. Pratam Gawali for Respondent.

Navya Network Inc.

Assistant Controller of Patents and Designs

Nature of Litigation

Petition under Section 117A of the Patents Act, 1970 challenging the refusal of a patent application.

Remedy Sought

Setting aside of the Impugned Order dated 27th May 2024 refusing the patent application and remand for fresh consideration.

Filing Reason

The Impugned Order lacked reasoning and failed to apply the five-step test for inventive step.

Previous Decisions

The Assistant Controller of Patents and Designs refused the patent application on 27th May 2024 on grounds of lack of inventive step and non-patentability under Section 3(k).

Issues

Whether the Impugned Order refusing the patent application on grounds of lack of inventive step under Section 2(1)(ja) is sustainable when it contains no reasoning as to how the claimed invention was taught by prior art documents. Whether the Respondent failed to apply the five-step test for obviousness as laid down in F. Hoffmann La Roche Ltd. v. Cipla Ltd.

Submissions/Arguments

The Impugned Order contained no reasoning as to how the claimed invention was taught by a combination of D1-D3; it merely reproduced Claim 1 and baldly held that the claim lacked inventive step. The Respondent failed to follow the five-step test for assessing inventive step under Section 2(1)(ja) as laid down by the Delhi High Court in F. Hoffmann La Roche Ltd. v. Cipla Ltd.

Ratio Decidendi

An order refusing a patent on the ground of lack of inventive step must contain reasoning as to how the claimed invention is taught by prior art documents and must apply the five-step test for obviousness. Failure to do so renders the order unsustainable.

Judgment Excerpts

The Impugned Order contained no reasoning whatsoever as to how the claimed invention was taught by a combination of D1-D3. The Respondent merely reproduced Claim 1 of the Application and baldly held that the Petitioner's claim lacked inventive step without any reasoning or basis to support such a finding. The Respondent had failed to follow the five-step test as laid down by the Delhi High Court in the case of F. Hoffmann La Roche Ltd. v. Cipla Ltd.

Procedural History

The petitioner filed a patent application (No. 2068/MUMNP/2014) which was refused by the Assistant Controller of Patents and Designs by order dated 27th May 2024. The petitioner then filed the present petition under Section 117A of the Patents Act, 1970 before the Bombay High Court challenging the refusal. The petition was reserved on 16th March 2026 and pronounced on 15th April 2026.