Need To Have A Relook At Patent Law’s Provision On Exclusions In View Of Growing Innovations: Delhi High Court To Union Govt

The Delhi High Court has observed that there is a need to re-look at Section 3(k) of the Patents Act, 1970, in view of growing innovations. Section 3(k) states that a mathematical or business method or computer programe per se or algorithms will be excluded from patentability under the Patents Act.

Justice Prathiba M Singh took note of the 161st Report of the “Review of the Intellectual Property Rights Regime in India” presented by Parliamentary Standing Committee and said that a concern is 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 court said.

Noting further that a large number of inventions in emerging technologies including small and medium-sized enterprises, start-ups and educational institutions could be in the field of business methods or application of computing and digital technologies, Justice Singh said:

“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. As the Parliamentary Committee Report referred to above recommends, 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.”

The court said a copy of the order be sent to the Secretary, DPIIT, Ministry of Commerce and Industry for necessary consideration.

The court made the observations while dismissing the appeal moved by a USA based entity, OpenTV Inc, challenging the order passed by Controller of Patents and Designs on May 31, 2021, refusing its application for grant of patent titled “System and method to provide gift media” under Section 15 of Patents Act.

The patent application was for a network architecture to enable the exchange of interactive media content distribution of any type of digital or tangible media. The application was rejected on the ground that the scope of the patent fell within Section 3(k) of the Act and therefore, was not patentable.

Denying relief to the entity, the court said that the exclusion in respect of business methods in section 3(k) is absolute and 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 court said.

The court further observed that the bar in India to grant of business method patents has to be read as an absolute bar without analysing issues relating to technical effect, implementation, technical advancement or technical contribution.

“The subject invention is therefore directed purely towards a method of giving a media as a gift which is nothing but a method of selling a media for gift purposes and is 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 court said.

Title: OPENTV INC v. THE CONTROLLER OF PATENTS AND DESIGNS AND ANR

Citation: 2023 LiveLaw (Del) 400

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