While deciding an appeal from the refusal of a patent application relating to a system for selectively concealing physical address information, the Madras High Court stated that a method would be considered a business method under Section 3(k) only if it is in substance a business method. As per the Court, the mere use of a method or system in business transactions would not make a claimed invention a business method.
Controller’s Reasoning
The relevant paragraph cited in the decision relating to the Controller’s reasoning reads as follows:
“5. …
“iv. The claims 1-39 submitted with hearing written submission disclose interaction and communication among user, e-commerce platform, logistic company and delivery executive. The interaction and communication ensures delivery of purchased product to the user by preserving privacy of the user by concealing his physical address at various levels involved in transaction of product from the stage of purchase to delivery.
v. From points (i) to (iv), it is evident that although invention takes care of privacy of the user during transactions to be carried out through e-commerce platform, the claims relates to completion of the transaction i.e. from the stage of purchase of the product to the delivery of the product through the channel of e-commerce platform, logistic company and delivery executive which is purely a business activity. Hence, subject matter of claims 1-39 filed with hearing written submission relates to business method and falls within scope of section 3(k) of the Act.”
Court’s Conclusion
While holding that the claimed invention is not a business method, the Court stated as follows:
“8. The CRI Guidelines, which provide guidance but should not be construed as providing an authoritative interpretation of Section 3(k), indicate that a claim would be construed as a business method if the claim is, in substance, for a business method. On examining the appellant’s claims, especially independent claim 1, it appears that the claims are directed at concealing the physical address of the purchaser of goods in e-commerce transactions by deploying software, hardware and firmware for such purpose. While it is possible that the conduct of e-commerce in this manner may be part of the business method of an enterprise if the claimed invention were to be put to use, the monopoly claim is not in respect of a business method but in respect of a claimed invention deploying hardware, software and firmware for purposes of data privacy and protection. Therefore, the conclusion that the claimed invention relates to a business method is untenable.”
As per the Court, the claims in the patent application do not relate to a business method because they use hardware, software, and firmware to facilitate selective concealment of addresses in e-commerce transactions. While the invention may be used in a business and may be based on a business process, the fact that it has been implemented by technological means using hardware, software, and firmware brings it out of the scope of the business method exclusion.
Order
With its comments, the Court set aside the order of the Controller of Patents and assigned the case to a new officer for fresh consideration. The Court asked the new officer to decide the case within 4 months.
Citation: Priya Randolph & Anr. vs The Deputy Controller of Patents and Designs, Madras High Court, 20th December, 2023, (T)CMA(PT)/109/2023 (OA/13/2018/PT/CHN)
Reviewed and verified by Ms. Sowmya S. Murthy, Patent Team, BananaIP Counsels
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