Delhi High Court: A Single Judge Bench of Prathiba M. Singh, J.* referred to the 161st Report of the “Review of the Intellectual Property Rights Regime in India” presented by the Parliamentary Standing Committee, wherein the Committee expressed a concern that many inventions might be excluded from patentability in view of Section 3(k) of the Patents Act, 1970 (‘Act’) and thus, this Court opined 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, therefore, there was a need to have a re-look at the exclusions in Section 3(k) of the Act, in view of the growing innovations.
Background
The appellant was engaged in providing interactive and enhanced television solutions and claimed to leverage its technologies and worldwide patent portfolio in providing such services and solutions. The present appeal had been filed by the appellant under Section 117A of the Act seeking an order to set aside the decision (‘impugned order’) issued by the respondent, wherein it refused the application for grant of a patent titled ‘System and method to provide gift media’ (‘subject patent’) filed under Section 15 of the Act. 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 subject patent application had been refused on the ground that the scope of the claimed subject matter of the subject patent falls within Section 3(k) of the Act and therefore, was not patentable, and on the ground that the amendment of Claims did not meet the criteria of Section 59 of the Act.
Analysis, Law, and Decision
The issues for consideration before this Court were:
1. Whether amendment of claims in a patent specification could be permitted at the appellate stage?
The Court relied on Nippon A and L Inc. v. Controller of Patents, (2022) 4 HCC (Del) 651, wherein this Court while referring to various decisions and the ‘Report on the Revision of Patent Law by Justice N. Rajagopala Ayyangar’ allowed the amendment of Claims from product Claims to process Claims. Thus, the Court opined that the fundamental principle governing amendment of Claims was therefore, that amendments were permissible in the Claims so long as the said amendments were within the scope of the originally filed Claims and did not expand the said Claims. Thus, reduction or narrowing down a Claim was permissible, but broadening, widening or expansion of Claims was not permissible.
The Court further relied on Societe Des Produits Nestle SA v. Controller of Patents and Design, 2023 SCC OnLine Del 582 (‘Nestle’), wherein it was observed that “there was no provision in the Act, which specifically barred the amendment of a patent specification at the appellate stage”. In Nestle Case, the Court after considering Section 15 of the Act held that since the Controller had the power of directing amendment to a patent application, a High Court in appeal would also have similar powers and further, it observed that the appeal was a continuation of the proceedings before the original forum and thus, amendments were permissible at the appellate stage. Thus, this Court opined that
“irrespective of whether the amendment was directed by the Court or was at the instance of Patent Applicant, so long as the requirements as laid down under Section 59 of the Act were fulfilled such that the amended claims were within the scope of original claims, was not breached, the amendment was permissible”.
The Court opined that in the present case, the conversion of method claims into system claims in the manner sought to be done, would be broadening of the Claims which was impermissible as per Section 59 of the Act. The Court noted that the Patent Office’s reasoning was that the scope of the claims as amended was beyond the scope of the original claims as filed. Thus, the same was beyond what was permissible under Section 59 of the Act. The Court observed that though there was no embargo on permitting a patent applicant to amend claims even at the appellate stage, the amendment sought in the present case intended to widen the scope of the original claims as filed, thus it could not be allowed.
2. Whether the subject invention was non-patentable in view of Section 3(k) of the Act?
The Court noted that in Section 3(k) of the Act, the exclusion in respect of business methods was an absolute one and was not restricted by the words ‘per se’ as in the case of computer programmes, as in the case of computer programs, the use of the phrase ‘per se’ meant that a program per se was not patentable but when the same exhibited a technical effect or an advancement, or a technical contribution, the invention could become patentable. The Court further 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 was put into application for giving of a gift which was sought to be patented.
The Court also noted that various known components and technologies were being adapted to enable giving of a gift without human intervention except at the beginning where the gift and recipient was chosen by the sender. The same was described in the form of a network in different embodiment formats and for the purpose of transmitting different media formats as well. The media could be subscription for a service, a DVD, a VC or any other tangible or intangible media. The purpose of the invention was primarily to enable giving of a media in tangible or intangible format to the recipient and such giving of a media irrespective of whether was worded as a method or as a system would be nothing but a method for doing a particular business i.e., for giving of a media as a gift. Thus, the Court opined that the subject invention was therefore 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. Thus, the Court dismissed the appeal and held that the subject invention was attracted by the exclusion from patentability under Section 3(k) of the Act.
The Court referred to the 161st Report of the “Review of the Intellectual Property Rights Regime in India” presented by the Parliamentary Standing Committee, wherein the Committee expressed a concern that many inventions might be excluded from patentability in view of Section 3(k) of the Act and thus, this Court opined 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, therefore, there was a need to have a re-look at the exclusions in Section 3(k) of the Act, in view of the growing innovations”.
[OpenTV Inc v. The Controller of Patents and Designs, 2023 SCC OnLine Del 2771, decided on 11-5-2023]
Advocates who appeared in this case :
For the Appellant: Vindhya S. Mani, Justina Mathew, Gursimran Singh Narula, Vaishali Joshi, Rishabh Paliwal, Advocates;
For the Respondent: Harish Vaidyanathan Shankar, CGSC; Srish Kumar Mishra, Sagar Mehlawat, Alexander Mathai Paikaday, Advocates.
*Judgment authored by: Prathiba M. Singh