FER reply :- Resolving objections under Section 3k of Patents Act, 1970

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Section 3 of Patents Act 1970 describes the instances in which the underlying invention is not patentable in India. Sub-section k of Section 3 excludes patentability of ‘a mathematical or business method or a computer programme per se or algorithms’.

According to the Guidelines for Examination of Computer Related Inventions (CRIs), 2017, Computer Related Inventions (CRIs) comprises inventions which involve the use of computers, computer networks or other programmable apparatus and include such inventions having one or more features of which are realized wholly or partially by means of a computer programme or programmes.

Business methods claimed in any form are not patentable subject matter. 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.[1]

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.

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 programmes per se.

Points to consider while drafting the complete specification and while filing the FER reply :-

  • 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”. However, keep in hindsight that the invention must not essentially carry out business/ trade/ financial activity/ transaction and/or a method of buying/selling goods through the web.[1]
  • Ensure that for business method claims, 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.
  • Humbly request the Controller to look into the underlying substance of the invention rather than the particular form in which it is claimed.[1]
  • Keep in mind that 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.
  • Keep in mind that a ‘means plus function claim’ may be allowed only if the structural features are disclosed in the specification.
  • Keep in hindsight that a mathematical formula would be considered in a claim only if the hardware is novel.
  • Even if the method employs software or algorithms for controlling the steps for achieving the desired result/effect having a sufficiently qualified technical character, does not make it eligible for exclusion from patentability.
  • Further if the method permits the computer program’s functionality to be realized, it should not therefore be deemed to be a computer program per se and thus should be patentable.[2]
  • Mere presence of a mathematical formula in a claim, to clearly specify the scope of protection being sought in an invention, may not necessarily render it to be a “mathematical method” claim. Also, such exclusions may not apply to inventions that include mathematical formulae and resulting in systems for encoding, reducing noise in communications/ electrical/electronic systems or encrypting/ decrypting electronic communications.
  • The claims should not be aimed at computer programs, but for a computing device, which has increased its technical effect due to its constructional features such as processor, memory, network interface, user interface, server, location device, etc.
  • The invention must attempt to establish a technical solution to a technical problem.[3]

References :-

  1. https://www.linkedin.com/pulse/patent-prosecution-business-methods-computer-related-india-sharma
  2. https://www.invntree.com/blogs/patenting-mathematical-methods#more-526
  3. https://www.mondaq.com/india/patent/673920/role-of-section-3k-in-patent-application-by-apple-inc