INTRODUCTION
The Indian High Courts have provided significant insights into the patentability of inventions under Section 3(k) of the Indian Patents Act, 1970 (hereinafter referred to as ‘Act’). This topic is crucial for understanding how to navigate the complexities of patent applications in the field of technology and business methods.
SECTION 3(K) OF THE INDIAN PATENTS ACT,1970
Section 3(k) of the Act stipulates that “a mathematical or business method, a computer program per se, or algorithms” are not patentable. This provision aims to exclude from patent protection those inventions that do not contribute to a technical field. Additionally, this section ensures that patent protection is reserved for inventions that offer a technological solution or advanced.
Two notable cases, Priya Randolph vs. Deputy Controller of Patents and Designs and Opentv Inc vs. The Controller of Patents and Designs illustrates the distinctions in the interpretation of what constitutes a business method and its patentability.
CASE STUDY 1: – PRIYA RANDOLPH VS. DEPUTY CONTROLLER OF PATENTS AND DESIGNS, 2023
In the present case, the Hon’ble Madras High Court set aside a refusal order by the Deputy Controller of Patents and Designs wherein the appellant filed a patent application with the Indian Patent Office, which was subsequently rejected by the Controller under Section 15 of the Act. The claims of the patent application pertained to a system for selectively concealing physical address information while enabling transactions connected to physical addresses. This invention addressed the technical problem of concealing a user’s physical address during online transactions involving product purchases. However, the Controller determined that the invention related to the completion of a transaction, deeming it a business activity. Consequently, the subject matter of the claims was classified as a business method, leading to the rejection of the patent application.
THE COURT’S DECISION
The High Court analyzed the claims under the 2017 Guidelines for Examination of Computer Related Inventions (CRI Guidelines) and found that the invention involved hardware, software, and firmware to improve data privacy and protection mechanisms. The Court held that the mere involvement of a business method did not render the invention unpatentable, as the claims provided a technical contribution. The court emphasized, “The invention as claimed provides a technical solution to a technical problem, which is the essence of patentable subject matter. Therefore, the refusal order was set aside and remanded for reconsideration.
CASE STUDY 2: – OPENTV INC VS. THE CONTROLLER OF PATENTS AND DESIGNS, 2023
In contrast, in the present case, the appellant filed an appeal challenging the Controller’s refusal of the patent application for a system and method to provide gift media. The invention is about a network-based system and method for giving media items as gifts. The appellant claimed that the invention solves the problem of traditional media distribution systems not being able to have two-way communication between the broadcasting server and the user device when exchanging selected media items. The appellant argued that the invention resolves this by using a network-based system and method that allows the source system to communicate with the receiver system over a distribution network and enables the receiver system to communicate with the source system via a return channel formed by the network. The Controller rejected the application, citing it as a business method under Section 15 of the Act.
THE COURT’S DECISION
The High Court upheld the Controller’s decision, stating that the invention was directed purely towards a method of selling media as gifts, thus qualifying as a business method excluded from patentability under Section 3(k). The court noted, “The claimed invention lacks the necessary technical contribution and is primarily aimed at a business method, which is expressly excluded from patentability.” The Court emphasized the need to review the legislation concerning the patenting of business methods, computer programs, and algorithms, considering the growing innovations in these fields.
CONCLUSION: –
The decisions in “Priya Randolph vs. Deputy Controller of Patents” and “Designs and Opentv Inc vs. The Controller of Patents and Designs” highlights the critical difference between business methods and technical contributions in patent applications. While the former case recognized the technical contribution of the claimed invention, the latter confirmed the exclusion of pure business methods from patentability. These cases underline the importance of demonstrating a technical advancement in patent claims to overcome the exclusion under Section 3(k) of the Act. Patent applicants must carefully draft their claims to emphasize the technical aspects and contributions of their inventions to ensure they meet the requirements under the Patent Law. This will become increasingly important as technology continues to evolve, requiring ongoing adjustments to patent legislation and guidelines.