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Non-Patentability objection U/S 3 (k) of the Indian Patent Act and the Controller decisions

This article focuses on the involvement of section 3 (k) in the Indian Patent Act. Before studying the analysis, first, we have to understand that what is section 3 (k) stated according to the Patents Act, 1970. Section 3(k): A mathematical or business method or a computer programme per se or algorithm; are not patentable as per the Indian Patent Act. The “per se” part in 3(k) entitled that solely a mathematical method or a computer program is not patentable.  However, when the mathematical method or a computer program is linked to a machine, it might be patentable.  The Berne Convention states that the software is protected as the literature. It means that the “software is protected under copyright”. For a better understanding, the manual of the Patent Office Practice and Procedure states the reason why sole mathematical or business methods are not patentable. The manual says “Mathematical methods” are considered to be acts of mental skill. A method of calculation, formulation of equations, finding square roots, cube roots, and all other methods directly involving mathematical methods are therefore not patentable. With the development in computer technology, mathematical methods are used for writing algorithms and computer programs for different applications, and the claimed invention are sometimes camouflaged as one relating to the technological development rather than the mathematical method itself. These methods, claimed in any form, are considered to be not patentable” If we look at the other side of the coin, if a computer program is associated with any hardware and with the combination of hardware and computer program (software) is achieving some result which is novel and inventive, then that combination invention will become patentable. The interpretation of section 3(k) can be analyzed with respect to some cases. Case study 1
Application number 3321/DELNP/2007 
Application type PCT NATIONAL PHASE APPLICATION 
Date of filing 03/05/2007 
Applicant name THE ROGOSIN INSTITUTE 
Title of invention “SCORING METHOD FOR DETERMINING PANCREAS SUITABILITY FOR ISLET ISOLATION” 
  In the above-mentioned case, the Controller has observed that the invention is falling under section 3(k) and decides to refuse the patent. The Controller states that “the present invention is related to a scoring method for determining the yield of islets in the isolated pancreas which is a mathematical method, a kind of algorithm for assessing five variables as numerical value has been given as score for phenotypic expression of the characteristic of Pancreas biopsies, hence not allowable under section 3(k) of The Patents Act, 1970”. Case study 2
Application number 1695/DELNP/2005 
Application type PCT NATIONAL PHASE APPLICATION 
Date of filing 26/04/2005 
Applicant name TELECOM ITALIA S.P.A 
Title of invention “A DEVICE, EMBODIED IN DIRECTORY SERVER, FOR STORING PERSONAL PROFILES” 
  In this patent application, the Controller has observed that the invention deals with the database but it clearly refers to the device in the claim. The reason for allowing the invention is that the claims of the invention clearly referred to devices. Also, this claim provides the use of devices when working with a database. The Controller refaced the claims related to the telecommunication link. The amended claims show that it is not a software or a computer programme per se by the way of an edition of the necessary transformation of the database. Hence, the invention not falls under section 3 (k) as it contains some device along with the database.  Case study 3
APPLICATION NUMBER IN/PCT/2002/705/DEL
APPLICATION TYPE PCT NATIONAL PHASE APPLICATION
DATE OF FILING 17/07/2002
APPLICANT NAME ALLANI FERID
TITLE OF INVENTION “METHOD AND DEVICE FOR ACCESSING INFORMATION SOURCES AND SERVICES ON THE WEB.”
  The IPO rejected the patent application on the ground that claims 1-8 are computer programme per se under section 3 (k) and claims 1-9 which were device claims lack of novelty and inventive step under section 2 (1) (j). Then the applicant Allani Ferid was appealed in the Intellectual Property Appellate Board (IPAB) against the decision of the IPO. However, IPAB also citing a lack of technical effect or technical advancement in the application. The applicant has then filed a written petition before the Delhi High Court against the decision of IPAB.  After the hearing of the matter, the Delhi high court ordered the IPO to the re-examination of the patent application within the 2 months of the period. The IPO after re-examined the application concludes that the application still falls under section 3(k) with the lack of novelty. Therefore, due to the same reason, the application was refused again. However, the Delhi high court states in para 10 of the order which as follows:
  1. Moreover, Section 3(k) has a long legislative history and various judicial decisions have also interpreted this provision. The bar on patenting is in respect of ‘computer programs per se….’ and not all inventions based on computer programs. In today’s digital world, when most inventions are based on computer programs, it would be retrograde to argue that all such inventions would not be patentable. Innovation in the field of artificial intelligence, blockchain technologies, and other digital products would be based on computer programs, however, the same would not become nonpatentable inventions – simply for that reason. It is rare to see a product that is not based on a computer program. Whether they are cars and other automobiles, microwave ovens, washing machines, refrigerators, they all have some sort of computer programs in-built in them. Thus, the effect that such programs produce including in digital and electronic products is crucial in determining the test of patentability.
  The ruling of the Delhi high court in Allani Ferid’s case considerably learns to the liberal approach in view of the granting the software patents. Hence, in the view of the aforementioned, the objections as regards lacking novelty and also fall under section 3(k). Therefore, The Indian Patent Office was refused to grant the application in view of the lack of novelty and section 3 (k) on the date of 07th February 2020.    Conclusion The above cases clearly state that the mathematical or business method or a computer programme per se or algorithm is solely not patentable under section 3(k). If the mathematical or business method or computer programme or algorithm is linked with some device or hardware then it might be patentable.