Section 3 (K) of Indian Patent Act: Case Study

13th February, 2017 - 5:22 am Categories: India Patents 0 Comments

Ms. Anjana Mohan, intern at Khurana and Khurana, Advocates and IP Attorneys attempts to analyze case study related to section 3 (k) of Patent Act, 1970.

ACCENTURE GLOBAL SERVICE GMBH (Appellants) V

ASSISTANT CONTROLLER OF PATENTS &

DESIGN AND THE EXAMINER OF PATENTS (Respondents)

CITATION- OA/22/2009/PT/DEL and Miscellaneous Petition No. 118/2012 in OA/22/2009/PT/DEL

HON’BLE JUDGES/CORAM:

Prabha Sridevan, J. (Chairman) and D.P.S. Parmar, Member (T)

Bibliographic Details:

As focus of the article is on section 3 (k), it has been reproduced below. For those who are new to this topic, section 3 of the Indian Patents Act, 1970 bars patent eligibility of some inventions.

Section 3 (k):

A mathematical or business method or a computer programme per se or algorithms

The appellants filed a PCT National phase application No. 01398/DELNP/2003 dated 01/09/2003 with 22 claims based on a PCT application No. PCT/US02/04964. On 03.02.2004 Form 13 was filed and claims were suo moto reduced to 18 and claims 19-22 were deleted.

In the First Examination Report (FER) dated 29/01/2008, based on the amended claims following objections, Inter-alia, were raised:-

1. Claims 1-18 are not patentable in light of certain prior arts (US 5907704, US 6145119, US 5911075, US 5966535 and US 6014666).

2. Claims in essence fall within the sense of section 3(k) of the Patent Act, 1970 (as amended).

During the hearing, the appellants submitted revised set of the claims, a new Claim 19 was also added without seeking amendment under section 57 and principle claim 1 is amended.

Appellant alleged that respondent’s order issued is influenced by incorrect facts and without application of mind and should be subjected to correction as Respondent indicated in the impugned order that the method claims were deleted by the Applicant only after raising of the objection by the Patent Office and have therefore on their own concluded that the objections raised by the Patent Office were correct and valid.  Appellant indicated fact that the method claims had been deleted from the present set of claims even before the filing a request for examination and only system claims were examined by the Examiner.

In the appeal it was found that allegations of appellant were true and board found it sufficient to say that the respondent has not applied his mind based on the existing facts.

Appellant alleged that ‘Applicable Standards’ relied on by the respondent to refuse the patent are neither mentioned in the Indian Patent Act nor in the Patent Office Manual or in guidelines by the Indian Courts in such matters.

Respondent had relied on below standards:

“1. A hardware implementation performing a novel function is not patentable if that particular hardware is known or is obvious irrespective of the function performed.

2. If the novel features of the invention resides in a set of instructions (programme) designed to cause the hardware to perform the desired operations without special adoption of the hardware or modification of the hardware, then the matter claimed either alone or in combination is not patentable.”

IPAB agreed to such allegations.

IPAB also observed that passing the impugned order without giving appellant opportunity to amend the claims caused violation of the principle of natural justice and it is unsustainable in law.

Court did not go into the details of the merit of the case, even though appellant had submitted the argument relating to the merits, as it remanded the case back to the respondent.

Later, when invention was analyzed on merits, Indian Patent Office passed an order on May 10, 2013 to grant the application with below observation:

‘the invention as claimed is not software per se but , a system is claimed which is having the improvement in web services and software. the invention since not falling in the category of section 3(K), viz software per se , objection is waived and patent is granted’