Caleb Suresh Motupalli v Controller of Patents (2025)

Summary

“The appellant assails an order dated 27.10.2021 issued by the respondent in the review petition filed by the appellant under Section 77(1) (f) and (g) of the Patents Act, 1970” ... “for reviewing the Controller’s decision on 21.04.2021 in respect of the appellant’s application for grant of patent (Indian Patent Application No. 5606/CHENP/2012).” (para 1) The invention was “titled ‘Necktie Persona-Extender/Environment-integrator and method for Super-Augmenting a Persona to Manifest a Pan-Environment Super-Cyborg’.” (para 2) The appellant “filed a review petition under Sections 77(1)(f) and (g) of the Patents Act and Rules 130(1), 130(2) of the Patent Rules, 2003 on 11.05.2021 by making amendments to the claims”, and “the respondent issued the impugned order dated 27.10.2021 rejecting the patent application” (para 5). The appellant contended that “his invention provides a ‘beyond-AI’ solution addressing the issue of ’n-Entropy’” and that “the invention non-invasively integrates human intelligence with Artificial Intelligence (AI) thereby upgrading humans to ‘human 2.0’.” (para 7)

The Court held that “a statutory appellate remedy is not provided for against an order-in-review issued under Section 77(1)(f) of the Patents Act. Therefore, the present appeal is liable to be dismissed at the threshold as not maintainable under Section 117-A of the Patents Act.” (para 17) “Without prejudice to the above conclusion, considering that the impugned order was issued in the nature of an order-in-original under Section 15 of the Patents Act, after a detailed re-examination of the patent application, I scrutinize the appeal on its merits.” (para 18) It held that “the claimed invention fails the enablement test under Section 10(4)(a) of the Patents Act” (para 30), that it “fails under section 10(4)(b)” (para 31), that it “fails to meet the requirements of Section 10(5) of the Patents Act” (para 33), and that it “does not qualify the test under and 3(k) of the Patents Act and is thus patent-ineligible.” (para 35) “Therefore, the impugned order does not warrant any interference and consequently, C.M.A. (PT) No. 2 of 2024 is dismissed without any order as to costs.” (para 37)

What the court decided

1. Procedure. Grounds of review before the Controller. “By virtue of Section 77(1)(f) of the Patents Act, Section 114 of the CPC” (“Civil Procedure Code”) “read with Order XLVII, Rule I(1)(a), becomes applicable.” “In order to sustain a review, the review applicant must demonstrate that the order-in-original suffers from any of the grounds mentioned in Order XLVII, Rule I(1)(a): 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 application dated 11.05.2021 filed in Form 24, I find that he has not canvassed any of the aforementioned grounds. In view of the fact that the review applicant failed to make out a case under Section 77(1)(f), the Controller ought to have rejected the review application.” (para 16)
2. Procedure. Review heard as original application. “Instead, she has dealt with the review application as an original application for grant of patent, conducted a second full-fledged hearing and issued the impugned order in the nature of an order-in-original under Section 15 of the Patents Act refusing patent grant.” (para 16)
3. Procedure. Maintainability under section 117-A. “Thus, Section 117-A provides for appeals to the High Court against, inter alia, an order of the Controller issued only under the Sections mentioned in Sub-section 2 of Section 117-A of the Patents Act. It can be seen that Section 77(1)(f) is conspicuous by its absence. In other words, a statutory appellate remedy is not provided for against an order-in-review issued under Section 77(1)(f) of the Patents Act. Therefore, the present appeal is liable to be dismissed at the threshold as not maintainable under Section 117-A of the Patents Act.” (para 17)
4. Enablement under section 10(4)(a). “In consonance with the patent bargain, Section 10(4)(a) requires the specification to describe the claimed invention and its method of operation in full to enable a PSITA” (“person skilled in the art”) “to work the invention in exchange of the monopoly granted during the patent term.” (para 19) “As was held in No-Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231, 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. Additionally, if the teaching in the specification is not adequate to achieve the results promised in the claimed invention, the specification is insufficient.” (paras 19–20)
5. The skilled person as a team. “For determining whether the teachings in the complete specification support these claims, the court must assume the mantle of a notional PSITA” (“person skilled in the art”). “The PSITA can be one technical expert or a team consisting of multiple experts depending on the nature of the invention.” “Therefore, the PSITA is a software engineer with expertise in AI” (“Artificial Intelligence”) “and allied fields or a team having experts well-versed in AI, black-box modernization techniques, Object Oriented Analysis and Design techniques.” (para 23)
6. Enablement applied. “On carefully examining the complete specification and the relevant prior art documents, I find that the appellant has merely coalesced the disclosures and discussions in the patent and non-patent literature, which largely relate to harnessing AI capabilities for advancing human operations, to arrive at the claimed invention.” “The teachings in the complete specification of the claimed invention do not provide any directions for the adoption of these technologies for persona extension and augmentation.” “Absent such teachings and the techniques not being common general knowledge for persona extension and augmentation, in my view, undue experimentation requiring the use of inventive faculty is necessary to achieve the promised result.” (para 26) “For the aforementioned lack of technical criteria in the complete specification to work the claims for achieving the intended result, the claimed invention fails the enablement test under Section 10(4)(a) of the Patents Act.” (paras 26, 30)
7. Best method under section 10(4)(b). Of “C Van Der Lely NV v. Ruston’s Engineering Co. Ltd.” the Court recorded that Lord Justice Nicholls “propounded that the standard for ascertaining whether the claimed invention discloses its best mode of performance is to be determined as per practice and not in theory.” It held that “the complete specification is bereft of a) any teachings to use the object oriented analysis technique to achieve the promised integration and b) any technical feature to result in the decussation of the pyramids hosting the actors. Therefore, the claimed invention fails under section 10(4)(b) as it does not disclose any workable criteria to arrive at the intended result, let alone the best mode of performing the invention.” (para 31)
8. Clarity and fair basis. “Section 10(5) of the Patents Act requires the claims of the invention to be clear and succinct and to be fairly based on the matter disclosed in the specification.” The Court recorded that in General Tire the rule requires the patentee to provide “as clear a definition as the subject matter admits of”, that the fair basing rule “requires that the specification must enable the invention to be performed to the full extent of the monopoly claimed”, and that “in Van Der Lely, it was held that a claim covering an unimplementable or an unworkable embodiment is not fairly based on the specification.” (para 32)
9. Section 10(5) applied. “In addition to the unintelligible wording of the claims and the specification, I find that the definition, i.e., the claims pertaining to persona-extension, augmentation, and black-box modernization when read along with the description” ... “do not represent a workable embodiment for achieving the subject matter of the invention” ... “Therefore, I conclude that the claimed invention fails to meet the requirements of Section 10(5) of the Patents Act on grounds of ambiguity and failure to fairly base the claims on the disclosures in the complete specification.” (para 33)
10. Section 3(k) and technical effect. The Court recalled that it had “concluded in Microsoft Licensing Technology LLC v Assistant Controller of Patents, 2024:MHC: 2537, that if the claimed invention has 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, it would surmount the prohibition under the provision.” (para 34) “Devoid of any working examples or demonstration of the applicability of these techniques, which are known through the prior art to be used for modernizing outdated legacy information systems, to achieve persona extension and integration, the claimed invention does not possess any technical effect, much less any impact on hardware and thus fails to attain the promised result of super-augmentation of the user. Hence, the claimed invention does not qualify the test under and 3(k) of the Patents Act and is thus patent-ineligible.” (paras 34–35)
11. Procedure. Disposition. “For reasons set in the preceding paragraphs on the merits of the patent application, I record that even if the appeal were to be construed as an appeal against the order-in-original under Section 15 of the Patents Act, no interference would be warranted.” (para 36) “Therefore, the impugned order does not warrant any interference and consequently, C.M.A. (PT) No. 2 of 2024 is dismissed without any order as to costs.” (paras 36–37)

What the court did not decide

“The impugned order has rejected the application under Sections 10(4), 10(5), 3(b), 3(k), 3(m), and 59(1) of the Patents Act.” (para 19) “Since the appeal fails under Sections 10(4), 10(5), and 3(k) of the Patents Act, I do not find it necessary to examine the objections under other Sections.” (para 36)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 16 October 2026.