Patent Act provisions which bar grant of patent to 'business methods' need to be reexamined: Delhi High Court

The Delhi High Court recently said that there is need to reexamine the provisions in the Patents Act which lay down that ‘business methods’ are not patentable [OpenTV Inc v The Controller of Patents and Designs and Anr]. .Justice Prathiba M Singh expressed her concerns at the fact that many inventions may be excluded from being patented because they are in emerging technologies including by the start-ups, Small and Midsize Enterprises (SMEs) and educational institutionsSuch inventions could be in the field of business methods or application of computing and digital technologies, the Court 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 judgment stated.It referred to the 161st report of the “Review of the Intellectual Property Rights Regime in India” presented by the parliamentary standing committee and said that even the committee has expressed similar concerns.The Court conceded that the modification of the provision would clearly be in the legislative domain.However, it passed a direction to the registry to send a copy of the judgment to the Secretary, Department for Promotion of Industry and Internal Trade (DPIIT), Ministry of Commerce and Industry for consideration..The Court was dealing with an appeal filed by US based company OpenTV Inc seeking directions to set aside the decision dated May 31, 2021 issued by the office of the Controller of Patents and Designs 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 refused on the ground that the scope of the claimed subject matter fell within the scope of Section 3(k) of the Act and therefore, could not be patented. The Controller of Patents and Designs further said that the amendment of claims dated 10th December, 2020 did not meet the criteria of Section 59 of the Act..After considering the case, Justice Singh held that the appellant’s invention is a business method and therefore, it was attracted by the exclusion from patentability under Section 3(k) of the Act and hence could not be granted 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 Court finally ordered..Advocates Vindhya S Mani, Justina Mathew, Gursimran Singh Narula, Vaishali Joshi and Rishabh Paliwal appeared for the appellant OpenTV.Respondent Controller of Patents and Designs was represented through Central Government Standing Counsel Harish Vaidyanathan Shankar as well as advocates Srish Kumar Mishra, Sagar Mehlawat and Alexander Mathai Paikaday..[Read Judgment]