Madras High Court Upholds Rejection Of AI-Human Integration Patent Claim

Facts of Issue

The applicant filed a patent application before the Indian Patent Office for a product titled "Necktie Persona-Extender/Environment-Integrator and Method for Super-Augmenting a Persona to Manifest a Pan-Environment Super-Cyborg," claiming priority over a U.S. patent application. The invention aims to enhance human capabilities by integrating AI and human intelligence.The First Examination Report (FER) was issued, raising objections to the patent claim concerning its applicability, lacking innovation, and non-compliance with the provisions of the Patents Act. The applicant made certain amendments to the patent claim and filed for patent.

The Controller (Respondent) subsequently issued a hearing notice and rejected the patent application, maintaining the objections stated in the FER. Aggrieved by this decision, the applicant filed a review petition, incorporating certain amendments to the claim. A second hearing was conducted, following which the impugned order was delivered, upholding the original order and rejecting the applicant's claim. A review petition was then filed, requesting the Court to set aside the order passed by the Controller.

Submissions of Applicant

The applicant claimed that the invention was new and distinct from existing literature. It introduced a system that integrated humans, AI, the real world, and digital spaces, creating a tangible impact and improving ease of use. The system functioned alongside the user, enhancing both cognitive abilities and physical capabilities. The applicant further asserted that, due to the multidisciplinary nature of the invention, a team of individuals with expertise across various fields referred to as Persons Skilled in the Art (PSITA) needed to be assembled to properly understand the specification, as required under the Act. In support of this argument, he cited Re Naquin, 398 F.2d 863, emphasizing that interdisciplinary inventions requires a team of skilled professionals from multiple disciplines.

Submissions of Defendant

The Controller(Respondent) stated that the claimed technical features lacked innovation, especially in areas like virtual environments, information retrieval, modernizing black-box systems, graphic communication, and knowledge commerce enhancement. The complete specification did not clearly define or describe key features, making it difficult to turn the abstract idea into a patent-eligible invention. The use of biblical references, vague terms, and unclear phrases made the claims too broad, failing to meet legal patentability requirements. Additionally, the interdisciplinary nature of the invention did not resolve these issues.The counsel argued that the claim was ineligible because the abstract idea was too vague to be transformed into a patentable product and that prior literature already existed on the proposed concept.

Observations by the court

The court concurred with the defendant's submission that the claims were too vague, and lacked a clear technical feature. The court found that the invention did not meet the requirements of the Patents Act due to its ambiguity and failure to properly base the claims on the details provided in the complete specification. It held that the invention did not offer any clear method to achieve the intended result. Additionally, it determined that the invention had no real technical effect and failed to deliver the promised super-augmentation of the user.

The court held that The Controller erred by dealing with the review application as an original application for a patent grant, conducting a second full-fledged hearing, and issuing an order in the nature of an order-in-original under Section 15 of the Patents Act.The court noted that the Controller should have rejected the review application as the original order did not suffer from any procedural defect or sufficient reason.The court did not accept the submissions of the applicant and dismissed the appeal filed by Caleb, upholding the Controller's decision to reject the patent application.

Case Title: ALEB SURESH MOTUPALLI v. CONT

Citation: 2025 Livelaw (Mad) 59