OpenTV Inc v Controller of Patents and Designs (2023)

Summary

“The present appeal has been filed by the Appellant- OpenTV Inc. seeking inter alia, an order to set aside the decision dated 31st May, 2021” (para 2), which “refused the application for grant of a patent titled ‘System and method to provide gift media’ bearing Application No. 2564/DELNP/2012, filed on 23rd March, 2012 (hereinafter ‘subject patent’), under Section 15 of the Patents Act, 1970 (hereinafter ’the Act’).” (para 2) “The subject patent application is stated to be a network architecture and a method implemented on the same to enable the exchange of interactive media content distribution of any type of digital or tangible media.” (para 2) “The subject patent application has been refused on the ground that the scope of the claimed subject matter of the subject patent falls within Section 3(k) of the Act and therefore, is not patentable, as also on the ground that the amendment of Claims dated 10th December, 2020 do not meet the criteria of Section 59 of the Act.” (para 3) “During the course of hearing of this appeal, an amendment to the Claims was sought to be made by the Applicant to delete all the Method Claims and seek to incorporate a total of 16 Claims.” (para 47) The Court asked “Whether amendment of claims in a patent specification can be permitted at the appellate stage, at the instance of the Applicant?”, “Whether the subject invention is non-patentable in view of Section 3(k) of the Act?” and “Whether the subject invention satisfies the other tests of novelty, inventive step and industrial application and is entitled to patent?” (para 45)

The Court held that “irrespective of whether the amendment is directed by the Court or is at the instance of Patent Applicant, so long as the requirements as laid down under Section 59 of the Act are fulfilled such that the amended claims are within the scope of original claims, is not breached, the amendment is permissible” (para 53), but that “the amendment sought in this particular case intends to widen the scope of the original claims as filed.” (para 60) It held that “the exclusion in respect of business methods is an absolute one and is not restricted by the words ‘per se’ as in the case of computer programs” (para 67), that “the only question that the Court or the Patent Office while dealing with patent applications involving a business method, needs to consider is whether the patent application addresses a business or administrative problem and provides a solution for the same” (para 73), and that “The subject invention is therefore directed purely towards a method of giving a media as a gift which is nothing but a method of selling a media for gift purposes and is hence a business method.” (para 81) “In light of the above findings, the appeal is dismissed. No order as to costs.” (para 83) In a postscript it held that “There is a need to have a re-look at the exclusions in Section 3(k) of the Patents Act, 1970, in view of the growing innovations in this space.” (para 86)

What the court decided

1. The governing principle of amendment. “The question as to the nature of amendments that are permissible during prosecution of a patent application has been dealt with in detail by this Court in Nippon A And L Inc. v. The Controller of Patents, 2022 SCC OnLine Del 1909 and decision dated 12th July, 2022 in C.A. (COMM.IPD-PAT) 295/2022 titled Boehringer Ingelheim International Gmbh V. The Controller Of Patents & Anr.” (para 48) Of Nippon A&L v Controller of Patents (2022), “In Nippon (Supra) this Court while referring to various decisions and the ‘Report on the Revision of Patent Law by Justice N. Rajagopala Ayyangar’ allowed the amendment of Claims from product by process Claims to process Claims.” (paras 48–49) “The fundamental principle governing amendment of Claims is therefore, that amendments are permissible in the Claims so long as the said amendments are within the scope of the originally filed Claims as filed and do not expand the said Claims. Thus, reduction or narrowing down a Claim is permissible, but broadening, widening or expansion of Claims is not permissible.” (paras 48–50)
2. Method claims worded as system claims. “A perusal of the patent specification as originally filed would show that the entire specification was directed towards a method of providing a media item as a gift.” “In contrast to the originally filed Claim 17, the Claim 29 and final Claim 1 are nothing but method claims which are worded as ‘System Claims’. The specification itself does not describe the system but the various steps to be taken for providing a media as a gift.” (para 56) “The system Claim which is now sought to be patented as Claim 1 may be within the overall scope of the specification, however, is not within the scope of claims as originally filed. Conversion of method claims into system claims in the manner sought to be done, would be broadening of the Claims which is impermissible as per section 59 of the Act.” (para 56) “There may be some exceptional cases where such a conversion may be permissible depending on the nature of the invention and the scope of Claims.” (para 56)
3. Amendment refused. “Therefore, though there is no embargo on permitting a Patent Applicant to amend claims even at the appellate stage, the amendment sought in this particular case intends to widen the scope of the original claims as filed. It is due to this reason that the same cannot be allowed.” (para 60)
4. The date of assessment. “The question as to whether a particular invention or a business method or not, is not dependent on the date of the application but on the wording of the claims and the subject matter of the invention.” (para 65) “The grant of monopoly on a method for giving media as a gift would in effect mean that any system architecture which enabled such giving would fall foul of the invention and in effect therefore, the monopoly relates to a method of giving a gift and hence a business method.” (para 65)
5. The business-method exclusion. “A perusal of the above provision shows that the exclusion in respect of business methods is an absolute one and is not restricted by the words ‘per se’ as in the case of computer programs.” (para 67) “In the case of computer programs, the use of the phrase ‘per se’ in effect means that a program per se is not patentable but when the same exhibits a technical effect or an advancement, or a technical contribution, the invention could become patentable.” (para 67) From Ferid Allani v Union of India (2019) the Court reproduced that “The bar on patenting is in respect of ‘computer programs per se….’ and not all inventions based on computer programs.” (para 67)
6. Software in the implementation. “In the present case, a computer program is involved in the implementation of the invention as is clear from the depiction in the figure 1 and 3 above which involves the use of various software applications. However, it is not the computer program or the software which is the claimed invention, it is the method in which it is put into application for giving of a gift which is sought to be patented.” (para 68)
7. The absolute bar in India. “Thus, the patentability of inventions based on methods of doing business or financial transactions, raised on the basis of decisions from the U.K. and European Patent Office which analyse the technical effect of a business method invention would not be squarely applicable in India. The bar in India to grant of business method patents has to be read as an absolute bar without analysing issues relating to technical effect, implementation, technical advancement or technical contribution.” (para 72) “The decisions cited by Ms. Mani, in Quest International (supra) as also the four-step test laid down in Aerotel (supra) and the five signposts given in AT&T (supra) would not be of assistance in the Indian context inasmuch as they deal with the issues of technical effect which may have a bearing under Article 52 of the European Patent Convention but not while considering an objection under Section 3(k) of the Act.” (paras 72, 76)
8. The test for business methods. “Thus, the only question that the Court or the Patent Office while dealing with patent applications involving a business method, needs to consider is whether the patent application addresses a business or administrative problem and provides a solution for the same.” (para 73) “In order to judge as to whether a particular patent application seeks to patent business methods or not, at the outset, the following aspects, ought to be considered -” “(i) whether the invention is primarily for enabling conduct or administration of a particular business i.e., sale or purchase of goods or services;” “(ii) whether the purpose of the invention is for claiming exclusivity or monopoly over a manner of doing business;” “(iii) whether the invention relates to a method of sale or purchase of goods or services or is in fact a computer program producing a technical effect or exhibiting technical advancement. If it is the latter, it would be patentable but not if it is the former.” (paras 73–74)
9. Modifications in a system. “In adjudging whether a particular invention is a business method patent or not, regard can be had to the kind of modifications being carried out in a system, if any, which may involve greater convenience to a consumer by change of the architecture, elimination of a physical step and similar tests.” Of Halliburton Energy Services v Comptroller, the Court held that “the said decision clearly holds that though technical effect and contribution are argued, the business method exclusion being generic, makes it tough for such patent application to be cleared for patenting.” (para 75)
10. Known components adapted for gifting. “A perusal of the patent specification would show that the purpose of the subject invention is to enable giving of media as gifts.” (para 62) “The above methods, architecture and steps are to be analysed to see whether the application qualifies for a patent.” (paras 62, 64) “In the present case, a perusal of the entire specification shows that various known components and technologies are being adapted in a manner so as to enable giving of a gift without human intervention except at the beginning where the gift and recipient is chosen by the sender.” (para 79) “Though, there is no doubt that there is a two-way communication, the purpose of the invention is primarily to enable giving of a media in tangible or intangible format to the recipient. Such a giving of a media irrespective of whether is worded as a method or as a system would be nothing but a method for doing a particular business i.e., for giving of a media as a gift.” (paras 62, 64, 79)
11. Business method under section 3(k). “The subject invention is therefore directed purely towards a method of giving a media as a gift which is nothing but a method of selling a media for gift purposes and is hence a business method. The subject invention is attracted by the exclusion from patentability under Section 3(k) of the Act.” (para 81)
12. Disposition. “The sum and substance of the above discussion is that despite the extremely persuasive submissions made on behalf of the Appellant, the subject invention is not entitled for grant of a patent.” (para 82) “In light of the above findings, the appeal is dismissed. No order as to costs. All pending applications, if any are also disposed of.” (paras 82–83)
13. Obiter. A re-look at section 3(k). “A large number of inventions in emerging technologies including by SMEs, start-ups and educational institutions could be in the field of business methods or application of computing and digital technologies. There is a need to have a re-look at the exclusions in Section 3(k) of the Patents Act, 1970, in view of the growing innovations in this space.” “As the Parliamentary Committee Report referred to above recommends, the need to consider the march of technology in the digital space, is an urgent one, so that patent law is not outpaced and patenting itself does not become irrelevant in the years to come” (para 86)

What the court did not decide

“Since the patent is being rejected on the ground of patentability under Section 3(k) of the Act itself, the issue of novelty and inventive step is not being gone into.” (para 81)

Subsequent treatment

Followed — In Telefonaktiebolaget LM Ericsson v Lava International (2024) (Delhi High Court, 28 March 2024), the Court reproduced paras 72–74 as affirming that the per se qualifier in section 3(k) applies only to computer programmes (para 68), and relied on OpenTV in revoking IN 203034 as an algorithm (para 146).

Followed — In BlackBerry v Assistant Controller (2024) (Delhi High Court, 30 August 2024), the Court reproduced paras 72–73 and held that the same unqualified bar applies to algorithms (para 45).

Followed — In Comviva Technologies v Assistant Controller of Patents (2024) (Delhi High Court, 12 November 2024), the Court reproduced paras 73–74 (para 13) and applied them in finding that the application addressed the security of the transaction, not a business problem, setting the refusal aside (paras 16–21).

Followed — In EMD Millipore v Assistant Controller of Patents and Designs (2025) (Delhi High Court, 9 October 2025), the Court reproduced paras 50–53 on section 59 and amendment at the appellate stage (para 76) and applied them to the amended claims (paras 77–81). No further appeal from OpenTV traced as of 11 October 2026.