In Comviva Technologies Limited vs. Assistant Controller of Patents & Designs, the Delhi High Court set aside the patent refusal order issued by the Indian Patent Office under Section 3(k) of the Patents Act, 1970. The Court held that the core invention of Comviva’s patent application resulted in a technical advancement and provided a taechnical solution to a technical problem, specifically enhancing the security of electronic payment transactions. This judgment clarifies the patentability of computer-related inventions in India and highlights the necessity of a nuanced understanding of the distinction between business methods and technical inventions, paving the way for future innovations in digital security and beyond.
Background
Comviva Technologies Limited (hereinafter referred to as the “Appellant”) filed a patent application titled “Methods and Devices for Authentication of an Electronic Payment Card using Electronic Token” (Application No. 201611000234) before the Indian Patent Office on January 4, 2016. The invention aimed to enhance the security of electronic payment transactions through a sophisticated token-based authentication system. However, the Patent Office refused the application on August 25, 2022, on the grounds that the claims pertained to a business method and a computer program per se, making them non-patentable under Section 3(k) of the Patents Act, 1970.
Appellant’s Arguments
The Appellant contended that the invention demonstrated a technical effect and contribution, making it patentable despite being based on a computer program. The invention involved a secure authentication method for financial transactions using multiple components, including a mobile device, a server, an electronic payment card, and an intermediary device.
Court’s Analysis
While analyzing the patentability of a computer program per se and business methods under Section 3(k), the Court relied upon the latest Computer Related Invention (CRI) Guidelines, 2017, which state that claims should be treated as business methods only if they are essentially about carrying out business, trade, financial activity, or transactions. The mere use of terms such as business, sales, transaction, or payment does not automatically render an invention a business method.
The Court also examined the observations made in Opentv Inc. v. The Controller of Patents and Designs, which established a three-step test for determining whether an application seeks to patent a business method. Additionally, the Court referred to Priya Randolph and Another v. Deputy Controller of Patents and Designs, where it was held that an invention involving hardware, software, and firmware components designed to improve data privacy was not merely a business method. Furthermore, in Ferid Allani v. Union of India, the Court had clarified that inventions demonstrating a technical effect or technical advancement were patentable, even if they involved computer programs.
Considering the precedents set by various courts, the Court concluded that the subject application was not addressing a business problem but rather resulted in a technical advancement in contactless payments. The invention provided a technical solution to the problem of preventing unauthorized transactions using electronic payment cards.
Decision
The Court set aside the impugned order dated August 25, 2022, and directed the Patent Office to proceed with granting the patent, subject to any other objections in accordance with the Patents Act.
Citation: Comviva Technologies Limited vs. Assistant Controller of Patents & Designs (C.A. (COMM. IPD-PAT) 492/2022), available at: https://indiankanoon.org/doc/197857960/
Authored by Dr. Sowmya Murthy, Patents Team, BananaIP Counsels
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
If you have any questions, or if you wish to speak with an IP expert/attorney, please reach us at: contact@bananaip.com or 91-80-26860414/24/34.
