Madras High Court
Dated: 25.08.2023 vs Assistant Controller Of Patents ... on 25 August, 2023
2023:MHC:3916
(T)CMA(PT)/75/2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 25.08.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)CMA(PT)/75/2023
(OA/19/2021/PT/CHN)
Nokia Technologies OY
a Corporation organized and existing
under the laws of Finland, of Karakaari 7,
02610 Espoo, Finland ... Appellant
-vs-
Assistant Controller of Patents and Designs
The patent Office
Patent Office, Intellectual Property Building,
G.S.T. Road, Guindy,
Chennai - 600032 ... Respondent
PRAYER: Transfer Civil Miscellaneous Appeal (Patents) filed under
Sections 117(A) of the Patents Act, 1970, prays to (1) an order setting
aside the impugned order dated October 08,2020 passed by the
Respondents; and (2) an order granting a patent on Indian Patent
Application No. 2359/CHENP/2010 in favour of the Appellant.
For Appellant : Ms.Archana Shanker
Ms.Shraddha Singh Chauhan
N.C.Vishal and Srivatsav
for M/s.Anand and Anand
For Respondent : Mr.C.Samivel, SPC
*********
1/10
https://www.mhc.tn.gov.in/judis
(T)CMA(PT)/75/2023
JUDGMENT
The appellant applied for grant of a patent in respect of a
system and method for listening to audio content. The said
application was filed on 23.04.2010. Originally, the appellant made 20
claims. The First Examination Report (FER) was issued on 11.08.2016.
In the FER, objections were raised. The objections were responded to
on 10.02.2017. In order to meet the objections, the appellant amended
the claims and submitted 11 amended claims for consideration.
Pursuant to a hearing notice dated 13.08.2020, the appellant was
heard and the impugned order of refusal was issued on 08.10.2020.
2. Learned counsel for the appellant opened her submissions by
pointing out that the European Patent Office granted a patent for this
invention. She invited my attention to the original claims, the
amended claims and the impugned order. With reference to the
impugned order, learned counsel pointed out that only claims 1 to 5
and claims 11 to 14 were objected to. Consequently, it is submitted
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(T)CMA(PT)/75/2023
that the patent should have been granted as regards apparatus claims
to which no objections were raised. Learned counsel further submits
that the impugned order discloses complete non-application of mind
inasmuch as there were only 11 amended claims whereas claims 11
to 14 are referred to in the impugned order. This also reveals that
the amended claims were not considered while pronouncing the
impugned order.
3. As regards the objections on the ground of Section 3(k) of the
Patents Act, 1970, learned counsel submitted that the scope of Section
3(k) is limited to computer programmes per se and that Section 3(k)
would not inhibit the grant of patents if a technical solution is
provided by deploying computer programmes. In support of these
contentions, learned counsel placed for consideration the following
judgments:
(i) Ferid Allani v. Union of India and Others, order
dated 12.12.2019 in W.P.(C)/2014, particularly paragraphs
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(T)CMA(PT)/75/2023
10 to 12 thereof (also placed before the Assistant Controller).
(ii) Microsoft Technology Licensing, LLC v. The
Assistant Controller of Patents and Designs,
2023:DHC:3342, particularly paragraphs 39 and 40 thereof.
4. If remanded, learned counsel further submitted that the
matter should be heard by an officer other than the officer who
passed the impugned order. In support of this submission, learned
counsel placed reliance on several judgments, including the
following:
(i) Art Screw Co. Ltd. v. The Assistant Controller of
Patents and Designs, 2022/DHC/005571.
(ii) Dr.Sapna Nangia v. The Assistant Controller of
Patents and Designs, 2023/DHC/001283.
(iii) Dolby International AB v. The Assistant
Controller of Patents and Designs, 2023/DHC/001854.
https://www.mhc.tn.gov.in/judis
(T)CMA(PT)/75/2023
5. In response to these submissions, Mr.Samivel, learned SPC,
relied on Section 3(k) of the Patents Act and contended that a
computer programme is not an invention in terms of the Patents Act
and that, therefore, the impugned order is in order and does not call
for interference.
6. According to Mr.Samivel, neither the original claims nor the
amended claims satisfy the requirements for patentability. Without
making any concession on the merits of the matter, he submits that
the matter may be remanded for re-consideration because the
impugned order refers to claims 11 to 14, whereas only 11 amended
claims were submitted.
7. The operative part of the impugned order is as under:
“Examiner's Observation about
1. claims 1 – 5 of the alleged invention discloses a
method for listening to audio content, which refers to an
algorithm, as it consists of a set of instructions for
controlling a sequence of operations to get the desired
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(T)CMA(PT)/75/2023
result. Hence, the same is not patentable u/s.3(k) of The
Patents Act, 1970. Without prejudice to any other
objections, claims 11 – 14 of the alleged invention
discloses a computer program product, which does not
have any inventive hardware features and refers to
computer program per se as it consists of a set of
instructions for controlling a sequence of operations.
Hence, the same is not patentable u/s.3(k) of the Patents
Act, 1970.
6. The oral argument and the written submission of the
agent of the applicant have been carefully considered.
However without prejudice, although the hearing
submissions have attempted to address the other
requirements, yet the substantive requirement of the Patents
Act, 1970 i.e. Section 3(K) is not found complied with.
Deletion of claims containing software instructions in
claims clearly signify the invention lied in set of algorithm
to which Examiner has pointed out.
Hence, in view of the above and unmet requirements, this
instant application is not found in order for grant Also I
agree with the findings of the examiner that the
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(T)CMA(PT)/75/2023
subject matter as described and claimed attract the
provisions of Section 2(1)(j) of the Patents Act, 1970.”
8. On examining the operative part of the order, it is evident
that the examiner's observations with regard to original claims 1 to 5
and 11 to 14 are set out therein. In light of the fact that 11 amended
claims were submitted in response to the FER and the objections
raised therein, it is clear that there was non-application of mind while
issuing the impugned order. Besides, after setting out the examiner's
observations on the original claims, the impugned order records the
conclusion that the substantive requirement of the Patents Act, i.e.
Section 3(k) is found not complied with. Other than setting out the
said conclusion, the Assistant Controller of Patents and Designs has
not considered the response of the appellant to the FER or the
submissions made with regard to the scope and ambit of Section 3(k)
of the Patents Act. Consequently, the impugned order is
unsustainable and is hereby set aside.
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(T)CMA(PT)/75/2023
9. As a corollary, the matter is remanded for re-consideration. It
is appropriate that such re-consideration is undertaken by an officer
other than the officer who issued the impugned order so as to
eliminate the possibility of confirmation bias.
10. For reasons set out above, (T)CMA(PT)/75/2023 is
disposed of without any order as to costs and without expressing any
opinion on the merits by remanding the matter for re-consideration
of Application No.2359/CHENP/2010 on the following conditions:
(i) The re-consideration shall be restricted to
objections contained in the impugned order.
(ii) Legal submissions, including precedents, on
Section 3(k) of the Patents Act shall be considered and
dealt with.
(iii) Such re-consideration shall be by an officer other
than the officer who issued the impugned order.
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(iv) After providing a reasonable opportunity to the
appellant, a reasoned decision shall be pronounced within
a maximum period of three months from the date of receipt
of a copy of this order.
25.08.2023
Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes / No
https://www.mhc.tn.gov.in/judis
(T)CMA(PT)/75/2023
SENTHILKUMAR RAMAMOORTHY, J
kal
(T)CMA(PT)/75/2023
(OA/19/2021/PT/CHN)
25.08.2023
https://www.mhc.tn.gov.in/judis
