In C.A.(COMM.IPD-PAT) 14/2021-DEL HC- Delhi HC takes note of Parliamentary Committee’s Report raising concern that many inventions may be excluded from patentability in view of Sec.3(k) of Patents Act, says there is a need to have a relook at exclusions in view of growing innovations
Justice Prathiba M. Singh[11-05-2023]

Read Order: OPENTV INC Vs. THE CONTROLLER OF PATENTS AND DESIGNS AND ANR 

Tulip Kanth

New Delhi, May 15, 2023:  Noting that a large number of inventions in emerging technologies including by SMEs, start-ups and educational institutions could be in the field of business methods or application of computing and digital technologies and referring to the recommendations of the Parliamentary Committee’s Report, the Delhi High Court has held that the need to consider the march of technology in the digital space, is an urgent one so that patent law is not outpaced.

“There is a need to have a re-look at the exclusions in Section 3(k) of the Patents Act, 1970, in view of the growing innovations in this space”, the Bench asserted.

The appeal had been filed by the Appellant- OpenTV Inc. seeking an order to set aside the decision issued by the office of the Controller of Patents and Designs rejecting the application for grant of a patent titled ‘System and method to provide gift media’ under Section 15 of the Patents Act, 1970. The subject patent application was stated to be a network architecture and a method implemented on the same to enable the exchange of interactive media content distribution of any type of digital or tangible media.

The patent application had been refused on the ground that the scope of the claimed subject matter of the subject patent fell within Section 3(k) and therefore, was not patentable, as also on the ground that the amendment of Claims dated December 10, 2020 did not meet the criteria of Section 59.

Noting that the purpose of the subject invention is to enable giving of media as gifts, the Bench opined that the exclusion u/s 3(k) includes a mathematical or business method or a computer programme per se or algorithms and the exclusion in respect of business methods is an absolute one and is not restricted by the words ‘per se’ as in the case of computer programs. 

In the case of computer programs, the use of the phrase ‘per se’ in effect means that a program per se is not patentable but when the same exhibits a technical effect or an advancement, or a technical contribution, the invention could become patentable, the Bench held.

In the present case, a computer program was involved in the implementation of the invention which involved the use of various software applications, however, it was not the computer program or the software which was the claimed invention, it was the method in which it is put into application for giving of a gift which is sought to be patented.

“In order to judge as to whether a particular patent application seeks to patent business methods or not, at the outset, the following aspects, ought to be considered - (i) whether the invention is primarily for enabling conduct or administration of a particular business i.e., sale or purchase of goods or services; (ii) whether the purpose of the invention is for claiming exclusivity or monopoly over a manner of doing business; (iii) whether the invention relates to a method of sale or purchase of goods or services or is in fact a computer program producing a technical effect or exhibiting technical advancement. If it is the latter, it would be patentable but not if it is the former”, the Bench clarified.

It was observed that the subject invention was directed purely towards a method of giving a media as a gift which was nothing but a method of selling a media for gift purposes and was hence a business method. 

“The subject invention is attracted by the exclusion from patentability under Section 3(k) of the Act. Since the patent is being rejected on the ground of patentability under Section 3(k) of the Act itself, the issue of novelty and inventive step is not being gone into”, the Bench noted while stating that despite the extremely persuasive submissions made on behalf of the Appellant, the subject invention was not entitled for grant of a patent.

Thus, the appeal was dismissed.

The Bench concluded the matter by referring to 161st Report of the “Review of the Intellectual Property Rights Regime in India” presented by the Parliamentary Standing Committee (Department Related Parliamentary Standing Committee on Commerce, presented to the Parliament on July 23, 2021) and observing that a concern is being expressed that a large number of inventions may be excluded from patentability in view of Section 3(k). 

“The modification of this provision would, in the context of the said report, clearly be one in legislative domain. In terms of the statute as it stands, business method inventions are not patentable”, the Bench said.

Considering the large number of inventions emerging in technologies in the field of business methods or application of computing and digital technologies, the Bench emphasised on the need to have a re-look at the exclusions in Section 3(k) & directed the Registry to send a copy of  order to the Secretary, DPIIT, Ministry of Commerce and Industry for necessary consideration.