The Appellant, seeking protection for an invention titled "For selectively
concealing physical address information," lodged Application No. 201641026786.
However, the Controller of Patents, in a decision dated July 31, 2017, declined
the grant of patent. The primary contention of the Controller was that the
invention merely represented a business method. Consequently, the Controller
invoked Section 3(k) of the Patent Act to justify the rejection.
Section 3(k) of the Patent Act:
Section 3(k) of the Patent Act serves as a crucial provision that delineates
what cannot be patented. Specifically, it bars patents for inventions that are
nothing more than business methods. This provision underscores the legislative
intent to ensure that patents are granted for technological innovations rather
than mere methods of doing business.
High Court's Observations:
Upon appeal, the High Court undertook a meticulous examination of the matter.
The Court's primary contention was that the essence of the claimed invention
wasn't rooted merely in a business method. Instead, the invention involved the
deployment of hardware, software, and firmware. These components collectively
aimed at enhancing data privacy and protection mechanisms.
The Court astutely observed that the mere involvement of a business process or
method in an invention doesn't ipso facto render it unpatentable. What is
pivotal is the overarching nature and essence of the invention. In this context,
since the invention under consideration primarily revolved around data privacy
mechanisms implemented through tangible technological components, labelling it
as a mere business method was untenable.The decision holds significance for
future patent applications that may incorporate business methods within
The Case Law Discussed:
Case Title: Priya Randolph Vs Deputy Controller of Patent and Design
Date of Judgement/Order:20.12.2023
Case No. OA/13/2018/PT/CHN
Neutral Citation No:2023:MHC;5450
Name of Hon'ble Court: Madras High Court
Name of Hon'ble Judge: Senthil Kumar Ramamoorthy, HJ
Ideas, thoughts, views, information, discussions and interpretation expressed
herein are being shared in the public Interest. Readers' discretion is advised
as these are subject to my subjectivity and may contain human errors in
perception, interpretation and presentation of the fact and issue involved
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539