Priya Randolph v Deputy Controller of Patents and Designs (2023)

Summary

“The appellant filed Application No.201641026786 for grant of patent to an invention titled ‘For selectively concealing physical address information’. In response to a request, the First Examination Report (FER) was issued on 15.09.2016.” (p 2) “As regards Section 3(k), the FER recorded that claims 1 to 41 fall within the meaning of ‘computer programme per se’ under Section 3(k).” (pp 2–3) “In the hearing notice, an objection with regard to sufficiency of disclosure was raised for the first time. As regards the objection under Section 3(k), the objection was maintained, albeit by stating that the claims relate to a business method. Eventually, by impugned order dated 31.07.2017, the application was rejected by referring to Section 3(k) and concluding that the claimed invention is a business method.” (p 3) The Deputy Controller had reasoned that “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.” (para 5)

The Court held that “From Section 3(k), it emerges that four types of patent claims are dealt with: a mathematical method; a business method; a computer programme per se; and algorithms.” (para 7) It held that “The CRI Guidelines” (“Guidelines for Examination of Computer Related Inventions”), “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” and that “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.” (para 8) “Consequently, the impugned order is set aside and the matter is remanded for re-consideration” (para 9), and the appeal “is disposed of on the above terms without any order as to costs.” (para 10)

What the court decided

1. The four exclusions in section 3(k). “From Section 3(k), it emerges that four types of patent claims are dealt with: a mathematical method; a business method; a computer programme per se; and algorithms.” (para 7)
2. The substance test. “The CRI Guidelines” (“Guidelines for Examination of Computer Related Inventions”), “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.” (para 8)
3. The claims concealing a physical address. “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.” (para 8)
4. Remand. “Consequently, the impugned order is set aside and the matter is remanded for re-consideration” (para 9), and “(T)CMA(PT)/109/2023 is disposed of on the above terms without any order as to costs.” (paras 9–10)
5. Procedure. Another officer and time. “(i) In order to preclude the possibility of pre-determination, an officer other than the officer who issued the impugned order shall undertake such re-consideration.” “(ii) After providing a reasonable opportunity to the appellant, a reasoned decision shall be issued within a period of four months from the date of receipt of a copy of this order.” (para 9)

What the court did not decide

“(iii) Except for the conclusion with regard to business method, it is made clear that no opinion is expressed herein on the merits of the application.” (para 9)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 16 October 2026.