The Madras High Court recently delivered its judgement in the appeal filed by Caleb Suresh Motupalli, in Caleb Suresh Motupalli vs Controller of Patents [C.M.A. (PT) No. 2 of 2024]. The appeal challenged the order passed by the Controller in the review petition filed by the Appellant under Section 77(1)(f) and (g) of the Patents Act, 1970.

The review petition was filed by the Appellant seeking review of the Controller’s decision that refused their patent application number 5606/CHENP/2012, entitled ‘Necktie Persona-Extender/Environment-integrator and method for Super-Augmenting a Persona to Manifest a Pan-Environment Super-Cyborg’. The refusal was based on several grounds, including lack of enablement and definitive scope of the invention under Section 10(4); lack of clarity and conciseness under Section 10(5); amended claims being outside the scope of originally submitted claims in contravention of Section 57 read with Section 59; lack of compliance with formal requirements under Section 8(1)(b); lack of inventive step under Section 2(1)(ja); and non-patentability under Sections 3(k) and 3(m) of the Patents Act, 1970.

During the review process, the Controller conducted a second hearing, and the Appellant submitted an amended claim set along with written submissions. Following this, the Controller refused the patent application, primarily citing the same grounds as the initial refusal and adding an additional ground of Section 3(b).

The Madras High Court made two key observations in its judgement:

• Grounds for sustaining a review petition: The Court clarified that by virtue of Section 77(1)(f) of the Patents Act, Section 114 of the Civil Procedure Code (CPC) read with Order 47, Rule 1(1)(a) becomes applicable. A review petition can only be sustained if it demonstrates that the order-in-original suffers from any of the grounds mentioned in Order 47, Rule 1(1)(a) of the CPC. These grounds include error apparent on the face of the record, discovery of new or important matter or evidence which, despite exercise of due diligence, was not in the knowledge of the applicant during the original hearing process, or any other sufficient reason.

Upon examining the Appellant’s review petiton, the Court found that the Appellant had not raised any of the above-mentioned grounds. The Court specifically noted that the review petition should have been rejected by the Controller, but instead, the Controller treated the review petition as an original patent application, conducted a second hearing, and issued an order in the nature of an order-in-original (a decision on the substance of the patent) under Section 15 of the Patents Act, refusing the patent grant.

• Appeal against order-in-review: The Court addressed the appealability of the order-in-review under Section 77(1)(f) of the Patents Act. Notably, Section 117A of the Patents Act provides for appeals to the High Court against, inter alia, an order of the Controller issued only under Sections 15, 16, 17, 18, 19, 20, 25 (4), 28, 51, 54, 57, 60, 61, 63, 66, section 69(3), 78, 84(1) and 84(5), 85, 88, 91, 92 and 94. The Court noted that Section 117A does not provide a statutory appellate remedy against an order-in-review issued under Section 77(1)(f). Consequently, the Court held that an appeal against such an order-in-review is not permissible.

Importantly, the Court also alluded that if a review decision results in an order-in-original issued under Section 15, following a detailed re-examination of the patent application, an appeal under Section 117A is maintainable. This implies that an applicant would have a right to appeal if in the review petition the Controller has reconsidered the application and issued a decision on its merits rather than upholding the previous refusal. Since the impugned order was of the nature of an order-in-original, the Court decided to scrutinize the appeal on its merits.

The Court further examined the grounds of refusal of the patent application and upheld the refusal, highlighting the following aspects:

• Section 10(4)(a) requires that the specification must describe the claimed invention and its method of operation in full to enable a person skilled in the art (PSITA), or a PSITA team when an invention relates to multiple fields, to work the invention in exchange of the monopoly granted during the patent term. While the specification need not disclose every detail of the invention with accuracy and precision, must not require the PSITA to undertake undue experimentation or rely on inventive skills which are beyond their expertise. If the specification does not enable the PSITA to achieve the promised results of the claimed invention, it is deemed insufficient.
• Section 10(4)(b) requires the applicant to disclose in the complete specification the “best method of performing the invention which is known to the applicant and for which he is entitled to claim protection”. The determination of whether the invention discloses its best mode of performance should be based on practical considerations, not theoretical ones.
• Section 10(5) requires the claims to be clear, succinct, and fairly based on the matter disclosed in the specification. The patentee must provide “as clear a definition as the subject matter admits of” and the question of definition has to be decided as a “practical matter”. The specification must enable the invention to be fully executed within the scope of the monopoly claimed. A claim cannot be said to be based on the specification if it covers an unimplementable or an unworkable embodiment.
• Section 3(k) excludes from patentability “a mathematical or business method or a computer programme per se or algorithms”. To overcome this exclusion, the invention needs to demonstrate a technical effect, which is not limited to an application or a data set, improves the functioning and efficacy of the system, and has an effect on the hardware.