Wednesday, 22 February 2012

The funny side of Section 3(K) - Indian Patent Act

It will not be wrong to say that Section 3(d) in the past has invoked a lot of response from patent practitioners and industry experts. However, recent IPO decisions indicate that section 3(k) of the Indian Patent Act will generate a lot of debate and arguments in the coming few years and may soon take over section 3(d) as the most argued section. In Yahoo v. Controller, and Rediff, the IPAB differentiated the “Indian patent laws” from the “foreign patent laws” and re-emphasized the fact that business methods are not patentable in India. In what I may call as an “interesting argument”, one of the arguments, among others, that Yahoo contested in front of the IPAB was:
Google has been granted multiple business method patents in India, then why is the patent office and the IPAB prejudiced against Yahoo and why is differential treatment being netted by the office?” While IPAB agreed that there was an indication of differential treatment and a “more” uniform approach for deciding the outcome of such cases was the need of the time, the fact that the instant application failed to fulfill section 3(k) of the Indian patent act and lacked novelty when considered with section 2(1) (j) of the Indian patent act, was enough grant to refuse the appeal of the patentee.

The same is also true for software patents. In another bizarre response to an examination report (5763/DELNP/2005), the patent agent for the respondent, which happened to be Microsoft, argued that the claims do not fall under the category of software patents as the invention has been claimed as a “SYSTEM” as opposed to a “Computer Program” or instructions. One may call the response from the patent agent witty and funny. However, the assistant controller turned out to be “wittier”. The assistant controller observed that the system claim had been simply adapted from the method claim by simply amending the preamble to read “A system for …” and rest of the claim was a complete copy of the method claim. This, according to the assistant controller was nothing but a method claim and sheer addition of “A system” in the preamble could not qualify the claim as a machine or an apparatus claim. The application was rejected as lacking novelty in accordance with section 2(1) (j) and failing to comply with section 3(k).

Another observation that I have made is that the examiners tend to provide prior art references along with stating that the invention does not fall under a statutory class. I understand that it is normal during examination to reject applications based on multiple sections (for instance, in US context, 102, 103, 112 etc.), however, what is the rationale of first stating that invention fails to qualify the statutory classes (for instance, 101 rejection in US) and then providing references as prior art. Some may argue that it is easier to overcome the statutory rejection by bringing in some kind of operability in the claims to overcome the rejections, but then, is overcoming such a rejection as simple as it is portrayed? What's your say?


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