[Patents Act, 1970] Re-Look At Exclusions U/s. 3(K) Is Warranted To Match Growing Innovations So That Patent Law Is Not Outpaced: Delhi HC

Referring to the recommendations of the Parliamentary Committee’s Report, the Delhi High Court 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 and patenting itself does not become irrelevant in the years to come.

Noting that many 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, a Single Judge Bench of Justice Prathiba M. Singh observed that “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”.

Advocate Vindhya S. Mani appeared for the Appellant, whereas, CGSC Harish Vaidyanathan Shankar appeared for the Respondent.

Going by the background of the case, the Appellant (OpenTV Inc) had sought for 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 refusal of the patent application was based on the scope of the claimed subject matter of the patent alleging it to fall within Section 3(k) and also 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 High Court observed that the exclusion u/s 3(k) includes a mathematical or business method or a computer program 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.

Further, the High Court elucidated that in 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 noted that 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”, clarified the Bench.

Going further, the Bench 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.

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, the Bench dismissed the appeal and concluded that “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”.

Cause title: Opentv Inc vs. The Controller of Patents & Designs and Anr.

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