Madras High Court upholds Voicemonk patent: a clear signal on prior art mapping in AI/software patents

In Flipkart Internet Pvt. Ltd. v. Joint Controller of Patents and Designs & Voicemonk Inc. (CMA(PT) No. 9 of 2024, decided on January 5, 2026), the Madras High Court upheld the Controller’s decision rejecting Flipkart’s post-grant opposition to Indian Patent No. IN312437. The patent concerns a virtual agent system that helps users perform actions within websites or software applications. The Court held that the Controller had carefully compared the patent claims with the cited prior art and had given sufficient reasons for maintaining the patent.

Background of the case

Voicemonk Inc. filed a patent application titled “Systems and Methods for Virtual Agents to Help Customers and Business” on November 18, 2016. The invention was designed to make it easier for users to interact with websites and software applications. In simple terms, the system receives a user’s input, including voice input, understands what the user wants to do, performs the required actions within the application, and then provides the result to the user.

The application originally contained 36 claims, which were later amended during prosecution. After examination, the patent was granted as IN312437 on May 8, 2019, and published in the Patent Journal on May 10, 2019.

Flipkart filed a post-grant opposition on September 28, 2021. It challenged the patent on several grounds, including prior publication, prior public knowledge, lack of inventive step, non-patentability, insufficient disclosure, and non-compliance with Section 8 of the Patents Act. The Controller rejected all these grounds and allowed the patent to continue. Flipkart then appealed to the Madras High Court.

The High Court therefore had to examine whether the Controller’s findings were correct, particularly on novelty, inventive step, and the patentability of software-enabled inventions.

Appellant’s arguments (Flipkart Internet Pvt. Ltd.)

Flipkart argued that the Controller’s order should be set aside because it allegedly ignored relevant material, failed to give adequate reasons, and applied the wrong tests for novelty and an inventive step. Flipkart also argued that the claims were incorrectly interpreted and that the invention should have been excluded from patent protection under Section 3(k) of the Patents Act as a computer program per se.

According to Flipkart, the claimed features did not provide any real technical contribution or technical advancement over the existing prior art. It argued that features such as linking actions with tags, identifying relationships between actions, and showing a consolidated output page were already known or obvious from the cited references.

Respondent’s arguments (Voicemonk)

Voicemonk argued that the Controller had properly examined each prior art document, both individually and in combination. It submitted that none of the cited references disclosed the complete invention claimed in the patent. Voicemonk also argued that the Controller had carried out a detailed claim-by-claim comparison and had correctly applied the law on novelty, inventive step, and patentability.

Key technical features of the patent

A central issue in the case was whether the patent contained features that were new and inventive. The Controller identified four key features that formed the patent’s inventive concept.

First, the system stored relationships or correlations between different actions available within an application, such as searching, sorting, selecting, submitting, and comparing. Second, it associated one or more actions with specific tags. Third, it executed actions not only based on the user’s input, but also by using the stored correlations between actions. Fourth, it displayed a single consolidated output page to the user instead of multiple pages one after another.

The claims also referred to different types of correlations between actions, including sequential, hierarchical, and lateral correlations. These features became the main basis for comparing the patent with the prior art.

Both the Controller and the Court stressed that novelty and inventive step must be assessed by looking at the claimed combination as a whole. It is not enough to break the invention into separate parts and compare each part in isolation.

Prior art analysis

• Flipkart relied on seven prior art references, referred to as D1 to D7. Its novelty challenge mainly relied on three references: Google’s “Routing Queries Based on Carrier Phrase Registration“ (D1), Apple’s “Intelligent Automated Assistant“ (D2), and Google’s “Predicting and Learning Carrier Phrases for Speech Input“ (D3).
• For D1, the Controller found that it handled receiving voice queries and generating data from them. However, it did not disclose the claimed system of storing correlations between actions, using tags, or executing actions based on those correlations.
• D2 was considered closer prior art because it related to an intelligent automated assistant that could interact with users and connect with external services. Even so, the Controller found that D2 did not disclose the claimed correlation framework, tagging feature, or lateral correlation.
• D3 related to predicting and learning speech phrases. The Controller held that it also failed to disclose important parts of the invention, especially the correlation framework and execution mechanism.
• For inventive step, Flipkart also relied on D4 to D7. These references covered contextual information in virtual assistants, natural language speech processing, search quality determination, and correlation rules between event types. The Controller concluded that none of these documents, either alone or together, disclosed the core combination of features claimed in Voicemonk’s patent.
• The High Court agreed with the Controller’s analysis. It noted that the prior art did not disclose the complete framework of action correlation, tagging, execution based on correlations, and consolidated output, along with the claimed types of correlations.

Reliance on Lava International v. Ericsson

The Court relied on Lava to explain when prior art can destroy novelty. It stated that prior art anticipates a patent only if it clearly discloses the invention so that a skilled person can understand and practice it without further experimentation. The Court also said that novelty must be assessed after understanding the claims, identifying the relevant prior art, considering both express and implied disclosures, and then deciding whether the complete claimed combination has already been disclosed.

The Court reiterated that a patent can be anticipated only when the prior art discloses the invention in a manner that allows a skilled person to perceive and practice the invention without further experimentation. The Court further emphasized that novelty must be assessed after understanding the claims, identifying the relevant prior art, determining explicit and implicit disclosures, assessing material differences, and evaluating whether the complete combination of claimed elements has been previously disclosed.

Court’s reasoning on Section 3(k)

The Court also considered whether the patent was barred under Section 3(k) of the Patents Act, which excludes a computer program per se from patentability. Flipkart argued that the invention was only a software implementation and, therefore, not patentable.

The Controller rejected this argument. It found that the claim described a sequence of technical steps performed by the virtual agent. These steps included receiving user inputs, identifying the intended action, executing related actions, and providing an output. The dependent claims also described technical consequences flowing from these operations.

The High Court agreed with the Controller. It held that the invention involved technical operations performed by a virtual agent and could not be treated as a mere computer program or algorithm. The patent, therefore, did not fall within the exclusion under Section 3(k).

Other findings

The Court also rejected Flipkart’s objections on insufficient disclosure and Section 8 compliance. It noted that the application had been examined, that the claims had been amended during prosecution, and that the Controller had found support for the claims in the specification and drawings. The Court also noted that the required Form 3 disclosures had been filed and considered.

The Court further held that there was no breach of natural justice. Both parties had been given opportunities to file pleadings, evidence, and written submissions. The Controller had also considered the Opposition Board proceedings and the parties’ submissions before passing the order.

Conclusion

The Madras High Court dismissed Flipkart’s appeal and upheld the validity of Patent No. IN312437. The judgment highlights the importance of a careful feature-by-feature comparison between the patent claims and the prior art. It also confirms that novelty and an inventive step must be assessed by considering the claimed invention as a whole, rather than by isolating individual features. The decision is especially relevant for AI and software-related patents because the Court accepted that a virtual-agent-based system involving defined technical operations may be patentable and is not automatically excluded as a computer program per se. The ruling also reinforces the structured novelty analysis discussed in Lava International v. Ericsson, making it an important precedent for future disputes involving software and AI inventions.

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