Priya Randolph vs. Deputy Controller of Patents and Designs

Background

The appellants, Priya Randolph and Rohit Chaturvedi, filed an application (No. 201641026786) for a patent on an invention titled "For selectively concealing physical address information." This invention is aimed at enhancing privacy and data protection by concealing a user's physical address during e-commerce transactions.

Proceedings

1. First Examination Report (FER):

- Issued on September 15, 2016.

- The FER raised objections based on:

- Lack of inventive step.

- Section 3(k) of the Indian Patents Act, which excludes business methods and computer programs per se from patentability.

2. Response and Hearing Notice:

- The appellants responded to the FER.

- A hearing notice was issued on June 5, 2017, which included an objection regarding the sufficiency of disclosure for the first time. The objection under Section 3(k) was maintained, asserting that the claims were related to a business method.

3. Rejection of Patent Application:

- On July 31, 2017, the Deputy Controller rejected the patent application, concluding that the claimed invention was a business method and hence not patentable under Section 3(k).

Arguments Presented

1. Appellants' Arguments:

- The appellants' counsel, Mr. Ramesh Ganapathy, argued that the invention pertains to privacy and data protection, not merely a business method.

- Reference was made to independent claim 1 and claim 25, which specify the technological aspects of the invention.

- It was highlighted that the initial FER did not raise an objection about the sufficiency of disclosure, which was only introduced in the hearing notice.

- The counsel contended that the nature of the objection under Section 3(k) had transformed from a computer program per se to a business method without a substantial basis.

2. Respondent's Arguments:

- The counsel for the Deputy Controller argued that Section 3(k) excludes business methods from patentability.

- The invention was described as relating to e-commerce business methods, hence falling within the scope of Section 3(k).

Court's Analysis and Judgment

1. Assessment of the Objection under Section 3(k):

- The court referred to the Guidelines for Examination of Computer Related Inventions (CRI Guidelines) of 2017.

- According to paragraph 4.5.2 of the CRI Guidelines, a claim should be treated as a business method if it is a business method in substance.

- The court examined the claims, particularly independent claim 1, which involves concealing the physical address of the purchaser in e-commerce transactions using software, hardware, and firmware.

2. Conclusion on the Nature of the Claimed Invention:

- The court found that while the claimed invention could be part of a business method, it fundamentally involves a technological solution for data privacy and protection.

- Thus, the invention could not be solely classified as a business method excluded under Section 3(k).

3. Decision:

- The court set aside the rejection order, concluding that the Deputy Controller's decision was based on an untenable interpretation.

- The matter was remanded for reconsideration by a different officer to avoid pre-determination, with instructions to provide a reasoned decision within four months.

- The court clarified that it did not express any opinion on the merits of the application other than the conclusion regarding the business method.

Outcome

The appeal was disposed of with directions for a fresh evaluation by a different officer, ensuring a fair reconsideration of the patent application without any preconceived notions. This decision emphasized the necessity of distinguishing between technological inventions and mere business methods in the context of patentability under Indian law.