The Madras High Court in its decision dated August 30, 2024, in the case of Qualcomm Technologies Inc. vs Deputy Controller of Patents & Designs [CMA. (PT) No.18 of 2023] upheld the well accepted ‘solution to the problem’ approach. This approach provides a realistic and balanced assessment of the inventive step criterion by examining whether the claimed invention, in light of the closest prior art and the objective technical problem, would have been obvious to a person skilled in the art.

In the instant case, Qualcomm’s patent application number 201647026085, that disclosed a device designed to filter objectionable content in real-time during the recording of an event, was refused patent grant on the ground of lack of inventive step in view of prior art documents D1 and D2.

During the prosecution of the subject application, the Appellant differentiated the claimed invention from documents D1 and D2. It was the case of the Appellant that the claimed invention aimed to prevent the recording of objectionable material by stopping or preventing the recording when such content was identified based on specific pre-determined criteria through a software. In contrast, document D2 described a system where all visual content was recorded and stored on a server without any qualification regarding the objectionability of the content, requiring manual obscuring of objectionable material before streaming. The problem addressed by Qualcomm’s invention was to prevent the recording of objectionable material altogether, rather than obscuring it manually after recording. The claimed invention was intended to address this specific issue by intervening during the recording process itself. Similarly, the device described in document D1 did not operate during the live recording and streaming of events. D1 described a device which when connected to a multimedia audio system, filtered objectionable audio content using a beep sound. This device was used during editing and was not suitable for identifying objectionable visual content or the audio content of visual recordings during the recording process.

The Court noted that while refusing the claimed invention, the Controller failed to test the invention on the ‘solution to the problem’ rule. The Court reiterated that if an invention provides a solution to a problem not addressed by prior art, it could be considered as having an inventive step under Section 2(1)(ja) of the Patents Act, 1970. The Court remarked that “there is absolute non-application of mind on the part of the respondent in appreciating the invention of the appellant and in pressing into service certain prior arts… it is much easy for the Patent Controller to reject anything done citing some prior arts without even attempting to co-relate them to the invention for which the application for patent is made. It is time, the Patent Controllers are adequately sensitized not to deal with the invention presented for patent, like an English Grammar teacher striking out every sentence written with red ink. Mere expertise in the field of science may be just one of the criteria necessary for being a Patent Controller, but greater than the knowledge in a field of science is the possession of a scientific bent of mind that should excite a Controller about any invention presented before him, coupled with the humility to acknowledge the superiority of the inventor’s ability.”

The Court also noted the impugned order’s silence in relation to the submissions advanced by the Appellant and remarked that the Controller ought to have explained the relevance of the cited prior art documents.

In view of the foregoing, the Court set aside the impugned order and remanded the matter to the Patent Office for fresh consideration.