In an appeal in Navya Network Inc vs Assistant Controller Of Patents And Designs [Commercial Miscellaneous Petition (L) No. 15327 of 2025] on April 15, 2026, the Bombay High Court dealt with the question of whether the principles of natural justice, which are fundamental common law rules ensuring fairness and equity in decision-making, were followed by the respondent Controller.
In the present appeal, the appellant raised the issue of non-communication of vital objections on the basis of which the respondent Controller passed an order refusing their patent application for a “medical research retrieval engine”. The appellant contended that while passing the impugned order, the respondent Controller materially departed from the objections communicated to the appellant in the hearing notice dated March 5, 2024. According to the appellant, this deprived them of the opportunity to deal with or contest the new objections. It was further contended that non-communication of objections amounted to a clear violation of the principles of natural justice.
Additionally, the appellant pointed out that the respondent Controller failed to apply the stepwise analysis laid down under the “Hoffmann 5-step test” for inventive step analysis. The appellant also argued that the impugned order failed to explain how the cited prior art disclosed or rendered the claimed invention obvious.
Factual Matrix
The subject application filed by Navya Network related to a system and method for retrieving medical research documents using predefined relational expressions mapped to an ontological hierarchy derived from medical literature. The application for the claimed medical research retrieval engine was refused on the grounds of lack of inventive step under Section 2(1)(ja) and non-patentability under Section 3(k) of the Patents Act, on the basis that the invention was an algorithm and a computer program per se.
Court’s Findings and Decision
The Court perused the impugned order and considered the pleadings to determine whether the respondent Controller had violated the principles of natural justice, whether the claims were obvious under Section 2(1)(ja), and whether the claimed invention fell within the scope of non-patentable subject matter under Section 3(k).
On Violation of the Principles of Natural Justice
The Court noted that 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 impugned order contained findings to the effect that the invention pertained to a “self-learned ontology” and was therefore non-technical in nature. According to the Court, such a finding was clearly beyond the scope of the hearing notice, and consequently, the petitioner did not have an opportunity to respond to such objections.
The Court held that the impugned order materially departed from the objections communicated to the appellant in the hearing notice dated March 5, 2024. The Court ruled that there was merit in the appellant’s contention regarding non-communication of objections and agreed that there had been a violation of the principles of natural justice.
On Inventive Step Analysis
The Court perused the impugned order and found that the respondent Controller, without following the process for determining “inventive step” laid down by the Delhi High Court in F. Hoffmann-La Roche Ltd. vs Cipla Ltd., concluded that Claims 1 to 24 lacked inventive step in view of prior art documents D-1 to D-3. This clearly demonstrated that the five-step process had not been followed by the respondent Controller while determining inventive step.
Additionally, the Court observed that the impugned order was bereft of any analysis explaining how the cited prior art disclosed or rendered obvious the claimed invention. The Court further found that the impugned order neither undertook any comparison between the petitioner’s invention and the cited prior art nor explained the manner in which a person skilled in the art could, on the basis of the cited prior art, arrive at the claimed invention or consider it obvious.
On Technical Effect
The respondent contended that the invention was merely a computer program per se and an algorithm capable of being implemented on generic hardware and was therefore not patentable under Section 3(k). The respondent relied upon the Delhi High Court’s decision in the Microsoft Technology Licensing LLC case and the BlackBerry case ruling to justify rejection of the application.
The appellant, on the other hand, argued that the claimed invention produced a technical effect in the form of improved database retrieval efficiency and reduced computational load and that such inventions are not barred under Section 3(k). The Court found that the respondent Controller had failed to examine this aspect in the present case. The Court held that even if the respondent Controller’s contention were correct, it would not cure the defects in the impugned order identified earlier.
Decision of the Court
The Court allowed the appeal, holding that the impugned order suffered from significant legal deficiencies warranting judicial interference. Accordingly, the Court set aside the impugned order and remanded the matter to the Patent Office for fresh consideration.
Concluding Remarks
The Court once again reiterated that the principles of natural justice are designed to prevent arbitrary actions by authorities. The Court observed that the principles of natural justice are fundamental common law rules that ensure fairness and equity in decision-making by Controllers and are intended to prevent arbitrary action by quasi-judicial authorities.
A review of the reasons relied upon by appellate courts while setting aside orders refusing patent applications often reveals that non-technical issues, such as lack of reasons or non-communication of objections falling within the scope of principles of natural justice, constitute the primary basis for interference before the merits of the case are even examined. In the present case, the Court categorically stated that it is well settled that reasons are the heart and soul of an order. In the absence of reasons, a refusal order becomes liable to be set aside by an appellate court.
The judgment reestablishes that Controllers, functioning as quasi-judicial authorities under Section 78 of the Patents Act, 1970 and possessing powers akin to those of a civil court, are bound by principles of natural justice, including the requirement of reasoned decisions and adherence to the doctrine of audi alteram partem (fair hearing). The Controller must identify which specific features of the claimed invention are disclosed by the prior art and explain why those features render the invention obvious to a person skilled in the art. In other words, failure to apply the Hoffmann test may itself constitute a ground for setting aside and remanding a case for fresh consideration by the Patent Office.
Author – DPS Parmar (Special Counsel)