Case Note & Summary
The appeal arose from the rejection of Indian Patent Application No.951/CHENP/2013 by the Controller of Patents and Designs. The appellant, Navya Network Inc., sought a patent for an invention titled “Treatment Related Quantitative Decision Engine.” The Controller had issued a First Examination Report raising objections under Sections 3(k), 10(5), and on grounds of lack of novelty and inventive step. After hearing, the application was rejected by order dated 13.03.2023. The appellant challenged the rejection under Section 117A of the Patents Act, 1970. The appellant argued that the invention was not a computer programme per se because it resulted in a technical effect, relying on Microsoft Technology Licensing v. Assistant Controller of Patents and Designs. It also argued that the invention was not a business method and that the person skilled in the art should have included a medical expert. The appellant contended that the prior arts D2 and D3 did not render the invention obvious. The respondent maintained that the invention lacked inventive step and that both steps of the invention were anticipated by or obvious from D3, with the grading/scoring feature obvious from D2. The court analyzed the complete specification and found that the invention involved collating patient information, querying databases, and generating treatment scores using a generic computer. It compared the claimed features with prior art D3, which disclosed most features except quantitative scoring. Prior art D2 was found to disclose such scoring. The court held that the combination of D3 and D2 would have been obvious to a person skilled in the art. Consequently, the claimed invention lacked inventive step. The court further upheld the rejection under Section 3(k) as a computer programme per se and business method, noting the absence of any technical effect or improvement in computer functionality. The appeal was dismissed, and the Controller’s order was upheld.
Headnote
A) Patentability - Computer Programme Per Se - Exclusion - Patents Act, 1970, Section 3(k) - The invention claimed a system and method using a computer to generate treatment-related quantitative decision reports. The court held that the invention merely implemented a business method on a generic computer without demonstrating any technical effect or improvement in computer functionality, thus falling within the meaning of “computer programme per se” excluded under Section 3(k). Held that the objection under Section 3(k) was sustainable. (Paras 4, 7-12, 13) B) Patentability - Business Method - Exclusion - Patents Act, 1970, Section 3(k) - Following Open TV Inc. v. The Controller of Patents and Designs, an invention is excluded as a business method if intended primarily to enable conduct or administration of a particular business. The court found that the invention involved collating patient information, querying databases, and generating treatment scores, which is essentially a method for conducting the business of medical treatment decision-making. Held that it was excluded as a business method. (Paras 4, 7-12, 13) C) Patentability - Inventive Step - Obviousness - Patents Act, 1970, Sections 2(1)(ja) - The court examined prior art D3 and D2, holding that D3 disclosed all features of the claimed invention except quantitative grading/scoring. The court found that D2 disclosed such grading/scoring, and therefore the combination of D3 and D2 rendered the claimed invention obvious to a person skilled in the art. The invention also did not involve any technical improvement over a generic computer system. Held that the claimed invention lacks inventive step. (Paras 8-13)
Issue of Consideration
Whether the subject matter of Indian Patent Application No.951/CHENP/2013 is excluded from patentability under Section 3(k) of the Patents Act, 1970 as a computer programme per se or business method, and whether it lacks inventive step
Final Decision
The appeal is dismissed. The impugned order rejecting the patent application is upheld. The court finds that the claimed invention lacks inventive step and falls within the excluded subject matter under Section 3(k) of the Patents Act.
Law Points
- Legal points not extracted
- patent eligibility under Section 3(k) of the Patents Act
- 1970
- computer programme per se exclusion
- technical effect test
- business method exclusion
- inventive step analysis
- identification of person skilled in the art
- obviousness in light of prior art
