Patent Act Provisions That Bar Grant To ‘Business Methods’ Need To Be Re-examined: Delhi HC

The Delhi High Court recently stated that the provisions of the Patents Act that state that ‘business methods’ are not patentable should be re-considered.

A single bench of Justice Prathiba M Singh expressed concern that many inventions in emerging technologies, including those made by start-ups, Small and Midsize Enterprises (SMEs), and educational institutions, may be barred from being patented.

According to the Court, such inventions could be in the field of business methods or the application of computing and digital technologies.

“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 judgment reads.

It referred to the 161st report of the parliamentary standing committee’s “Review of the Intellectual Property Rights Regime in India” and stated that the committee had expressed similar concerns.

The Court acknowledged that changing the provision would clearly be in the legislative domain.

It did, however, direct the registry to forward a copy of the judgment to the Secretary of the Department for Promotion of Industry and Internal Trade (DPIIT), Ministry of Commerce and Industry, for consideration.

The Court was hearing an appeal filed by OpenTV Inc, a US-based company, seeking directions to set aside a decision issued by the Controller of Patents and Designs on May 31, 2021, refusing the company’s application for grant of a patent titled ‘System and method to provide gift media’ under Section 15 of the Patents Act.

The patent was denied because the claimed subject matter fell within the scope of Section 3(k) of the Act and thus could not be patented.

The Controller of Patents and Designs also stated that the claim amendment dated December 10, 2020 did not meet the requirements of Section 59 of the Act.

After hearing the case, Justice Singh determined that the appellant’s invention is a business method, which is subject to the exclusion from patentability under Section 3(k) of the Act and thus cannot be granted a patent.

“The sum and substance of the above discussion is that despite the extremely persuasive submissions made on behalf of the appellant, the subject invention is not entitled for grant of a patent. In light of the above findings, the appeal is dismissed. No order as to costs. All pending applications, if any are also disposed of,” the single bench ordered.