How to bypass objections under Section 3(k) Patents Act, 1970?

Section 3(k) of The Patents Act, 1970 (hereinafter as “Patents Act”) excludes patentability of ‘a mathematical or business method or a computer programme per se or algorithms’.

In this article, I have consolidated all the relevant rules, practice procedure and guidelines followed by the Indian Patent Office that prospective applicants of computer related inventions (CRI) may keep in mind to bypass any objections in the FER from the Controller.

Mathematical or Business method, Computer programme per se and Algorithms – What to keep in mind in order to bypass objections under Section 3(k) in the FER?

I. Business Methods

One of the first major break-through in the field of business method patents came with the decision of Intellectual Property Appellate Board (IPAB) in 2011 in Yahoo vs. Controller. While upholding the decision of Controller, IPAB held that the invention was only a business strategy and hence was not patentable u/s 3(k) of the Act. It observed that –

“…There are huge innovations in the computers themselves, but the invention claimed is not for the machine but for the method. From whichever point of time we look at it, it still looks to be a business method.”

Chapter 08 of the Manual for Patent Practice and Procedure, 2011 (“2011 Manual”) (08.03.05.10 c) provides that business methods claimed in any form are not patentable subject matter. The 2011 Manual excludes all kinds of business methods form patentability.

Para 4.5.2 of the Guideline for Examination of Computer Related Inventions dated February 19, 2016 (“2016 Guidelines”) elaborate the term ‘Business Methods’ as ‘involving whole gamut of activities in a commercial or industrial enterprise relating to transaction of goods or services.’ The Indian Patent Office considers a particular method to be a business method if it involves a monetary transaction or mere marketing or sale purchase methodology.

Para 4.5.2 further clarifies that the claims drafted not directly as “business methods” but apparently with some unspecified means are also un-patentable. At times when the claims are drafted not directly as business methods but apparently with some technical features such as internet, networks, satellites, telecommunications etc, then also, as per the 2011 Manual, the exclusion under Section 3(k) shall apply to all such business methods.

Therefore, if in substance the claims relate to business methods, even with the help of technology, they are not considered to be a patentable subject matter.

Para 4.5.2 of the 2016 Guidelines further provides that mere presence of the words such as “enterprise”, “business”, “business rules”, “supply-chain”, “order”, “sales”, “transactions”, “commerce”, “payment” etc. in the claims may not lead to conclusion of an invention being just a “Business Method”, but if the subject matter is essentially about carrying out business/ trade/ financial activity/ transaction and/or a method of buying/selling goods through web (e.g. providing web service functionality), should be treated as business method and shall not be patentable.

II. Computer related inventions (including mathematical method and algorithms)

Para 5 of the 2016 Guidelines lays down tests/indicators for Controller to determine patentability of computer related inventions. It provides that ‘…If the contribution lies only in mathematical method, business method or algorithm, deny the claim’.

According to Para 4.4.4 of the 2016 Guidelines ‘If, in substance, claims in any form such as method/process, apparatus/system/device, and computer program product/computer readable medium belong to the said excluded categories, they would not be patentable.’

Further, Para 4.4.4 provide that ‘Even when the issue is related to hardware/software relation, the expression of the functionality as a ‘method’, is judged on its substance. …, the focus should be on the underlying substance of the invention, not the particular form in which it is claimed.’

Furthermore, when claiming ‘method claims’, the following should be kept in mind –

‘Method claims’ are mere statements and as such are not allowable, they shall be given in clear steps and they shall be given as a matter of how these steps are performed by incorporating constructional features.

Furthermore, if the patent application claims a means for providing functionality then according to Para 4.4.5 of the said guidelines, ‘…The ‘means’ mentioned in the claims shall clearly be defined with the help of physical constructional features and their reference numerals to enhance the intelligibility of the claims. The claims in means plus function form shall not be allowed if the structural features of those means are not disclosed in the specification.’ .

Para 4.4.5 of the said guidelines also provides that “…, if the specification supports implementation of the invention solely by the computer program then in that case means plus function claims shall be rejected as these means are nothing but computer programme per se.”

Further, as per the 2016 Guidelines a ‘mathematical formula’ would be considered in a claim only if the hardware is novel.

Summary

To summarise,

  • Business methods are not patentable in any form. In order to patent a business method claim, it must be supported by a hardware i.e. the hardware itself must essentially provide for the ‘means’ of doing business. Further, the ‘means’ claimed must be specified.
  • Mere presence of the words such as “enterprise”, “business”, “business rules”, etc., may not lead to conclusion of an invention being just a business method. It must not essentially carry out business/ trade/ financial activity/ transaction and/or a method of buying/selling goods through web.
  • For computer related inventions, the applicants may apprise the Controller to look into the underlying substance of the invention rather than the particular form in which it is claimed. A novel hardware supporting the CRI is must. Further, the physical constructional features of the novel hardware must be mentioned in the claims.
  • A ‘method claim’ may be allowed only when they are given in clear steps and further supported by constructional features as to how these steps are performed.
  • A ‘means plus function claim’ may be allowed only if the structural features are disclosed in the specification.
  • A mathematical formula would be considered in a claim only if the hardware is novel.

I would suggest that applicants consider these points while drafting their patent application for filing in India, nevertheless, these would also be helpful for traversing the objections of Controller in the First Examination Report.

Further, the applicants, in their response to the objections raised in the FER, can apprise the Controller as to how their invention lies outside the scope of the aforementioned limitations.

One could traverse the objections made in the FER by amending the claims as provided by Section 59 of the Patents Act.

*Disclaimer: This article shall not, in anyway, constitute a legal advise.*

The post first appeared on my LinkedIn page here.

Siddhant Sharma

Siddhant is a Patent and Intellectual Property lawyer. He finds joy in exploring and writing about niche areas of law. He is finding better ways to describe the patent profession to a five-year old and a sixty-five year old.

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