Caleb Suresh Motupalli vs Controller of Patents: Maintainability of Appeal and Patentability under the Patents Act, 1970

Introduction

This landmark judgement provides the required elucidation on legal standing of an appeal filed against an order issued under section 77 of the Act and sheds light on Sections 10(4), 10(5) and 3(k) of the Patents Act, 1970 (hereinafter referred to as ‘the Act’).

Facts of the case

In the case of Caleb Suresh Motupalli vs Controller of Patents [C.M.A. (PT) No. 2 of 2024], the Hon’ble Madras High Court (hereinafter referred to as ‘the Hon’ble Court’) adjudicated on maintainability of an appeal filed under Section 117-A of the Act against an order-in-review, and scrutinized patentability of an invention.

The appeal was instituted by Caleb Suresh Motupalli (hereinafter referred to as ‘the Appellant’) against an order passed by the Controller of Patents (hereinafter referred to as ‘the Respondent’) in a review petition. The application was refused on grounds of lack of enablement and scope under Section 10(4); lack of clarity and conciseness under Section 10(5); scope of claims in contravention of Sections 57 and 59, lack of inventive step under Section 2(1)(ja), and non-patentability under Sections 3(k) and 3(m) of the Act, among others. 

Aggrieved by the refusal, the Appellant filed a review petition. Subsequently, a second hearing was issued, and on consideration of the written submissions filed therein, the application was refused.

Contentions of the Appellant

The Appellant submitted their arguments contending each ground of refusal, emphasizing that the invention provided a ‘beyond-AI’ solution to address the issue of ‘n-Entropy’, the loss of agency and control in the face of increasing AI capabilities and the threat of Runaway AI, by non-invasively integrating human intelligence with Artificial Intelligence (AI) thereby upgrading humans to "human 2.0". 

They argued that sufficiency of disclosure under Section 10(4)(a) must be assessed from the perspective of a person skilled in the art (PSITA), and if an invention is of an inter-disciplinary nature, it requires a team of PSITA to apply the enablement standard; and that the specification is adequate if it enables a person adept in each field to carry out the element relevant to the specialty. 

They further asserted that independent claims precisely define the scope of the claims, and the amendments ensured clarity and definiteness, without broadening of claims. They accentuated that the claims disclosed the best mode of performing the invention and achieved a technical advancement of non-invasive integration of human with AI, which was not disclosed in the prior art. The Appellant also refuted the objections under Section 3(k), 3(m) and 3(b) of the Act.

Contentions of the Respondent

The Respondent maintained that the invention lacked inventive step in view of the cited prior art. They averred that the complete specification did not adequately define non-limiting features, hence, the application failed to satisfy the requirements of Sections 10(4), 10(5) and 59(1) of the Act. Furthermore, they asserted that the invention was excluded from patentability due to the bar of Section 3(k) and 3(m) of the Act.

Hon’ble Court’s Analysis: On Sections 77, 117-A, 10(4), 10(5), and 3(k) of the Act

1. Maintainability of the Appeal

The Hon’ble Court expounded on maintainability of the present appeal, which had been filed against an order-in-review issued by the Respondent under Section 77(1)(f) and (g) of the Act.  

The Hon’ble Court held that the Appellant had failed to raise any of the necessary grounds required for filing a review under the law. Consequently, it concluded that the review petition itself ought to have been rejected by the Respondent at the preliminary stage for want of valid grounds.

2. Scope of Appeal under Section 117-A

   
   

The Hon’ble Court examined the scope of appeals under Section 117-A of the Act. It observed that this provision permits appeals to the High Court only against specific orders of the Controller, as listed under sub-section (2) of Section 117-A. Importantly, it noted the absence of Section 77(1)(f) — the provision granting the Respondent power to review — from the list of appealable sections. In view of this, the Hon’ble Court held that the Act does not provide a statutory appellate remedy against an order-in-review issued under Section 77(1)(f). Thus, the present appeal was liable to be dismissed at the threshold on the ground of non-maintainability under Section 117-A.

However, since the Respondent had examined the review application like an original application for grant of patent, conducted a second hearing and issued the impugned order under Section 15 of the Act, the Hon’ble Court proceeded to examine the appeal on its merits.

3. Examination on Merits 

Despite finding the appeal to be non-maintainable, the Hon’ble Court examined the matter on its merits because of the fact that the Respondent had treated the review application akin to an original application for the grant of patent. The Respondent had conducted a second hearing and passed the impugned order in the nature of an order-in-original under Section 15 of the Act.

• Substantive Analysis by the Hon’ble Court

Section 10(4): The Hon’ble Court referred to No-Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231 which held that “whilst it is not necessary that the specification should disclose every detail of the invention with accuracy and precision, it should also not demand of the PSITA undue levels of experimentation or the usage of inventive faculty, which the PSITA lacks, to work the invention.”, and emphasised that the complete specification mentioned the use of standard techniques for integration but lacked any teachings or working examples regarding its usage in achieving the integration. Thus, the invention failed the enablement test under Section 10(4)(a) of the Act.

With respect to Section 10(4)(b) of the Act, the Hon’ble Court noted that the complete specification was bereft of any teachings to use the object oriented analysis technique to achieve the promised integration and any technical feature. Therefore, the claimed invention failed under Section 10(4)(b). 

Section 10(5): The Hon’ble Court also deduced that the application failed to meet the requirements of Section 10(5) of the Act on grounds of ambiguity and failure to fairly base the claims on the disclosures in the complete specification. 

Section 3(k): The Hon’ble Court noted that the application failed to demonstrate a technical effect and does not improve the functioning and efficacy of the system. Therefore, it upheld the applicability of Section 3(k) of the Act to the present matter. 

Consequently, the Hon’ble Court dismissed the appeal in view of the observations made therein.