The Assistant Controller erred by not considering amended claims in a patent application, necessitating reevaluation on grounds of novelty and patentability, distinguishing between business methods and technical solutions.

JUDGMENT

Prathiba M. Singh, J. (Oral)

1. This hearing has been done through hybrid mode.

2. The present appeal under section 117A Patents Act, 1970 (hereinafter "Act") has been filed challenging the impugned order dated 12th June, 2020 passed by the Assistant Controller of Patents & Designs. Vide the said order, the Appellant's application No.3290/Del/2005 has been rejected under Section 15 of the Act.

3. The background of the case is that the Appellant has filed a patent application titled `process for conducting electronic tendering on secured platform' vide provisional application dated 7th December, 2005. The complete specification was, thereafter, filed by the Appellant on 7th December, 2006. However, the First Examination Report (hereinafter "FER") was only issued by the Respondent 10 years later on 29th January, 2016 in which the grant of patent was objected on the ground of lack of novelty, and non-patentability under Sections 3(k), and 3(m) of the Act.

4. In response to the FER, the Appellant filed its reply on 28th January, 2017 and it was brought to the attention of the Assistant Controller that the claims have been amended to overcome the objections raised in the FER. Thereafter, hearing was conducted and the impugned order was passed on 12th June, 2020. The submission of the ld. counsel for the Appellant, Ms. Rajeshwari, is that during the process of examination, the claims which were originally filed by the Appellant, which were 10 in number, were amended. Claim no.1 as originally filed reads as under:

"I Claim:

1. A process of tendering system comprising; a secure and open means for the bidder and the buyer in a predetermined time locked event and including the steps of pre-authentication of the bidder/buyer, access to the resources, tendering of bid, monitoring of activities, evaluation of bid and award are integrated over a secure platform."

5. However, after the amendment, the amended claim No.1 reads as under:

"I Claim:

1. A system and process for conducting electronic tendering over a secure platform/portal server in a networked computer system including clients comprising secure and open means for the bidder and the buyer in a predetermined time locked event and including the following steps: (i) pre-authentication of the bidder/buyer by digital signatures, (ii) providing access to the resources of secure platform/portal server via networked computer system after pre-authentication, (iii) securely customizing the system online by each buyer organization for accommodating 'variations in tendering policy, procedures and rules' peculiar to that organization (iv) tendering of bids over secure platform/portal server, (v) integrally evaluating and awarding the bids, wherein tendering of bids includes

- at the secure portal server, online configuring of tendering rules for that tender and digitally signing the said rules by the authorized officer of buyer;

- at bidder end, electronically encrypting bids using bidder-generated pass-phrase(s) with cryptographic protocol, digitally signing electronically encrypted bids and submitting;

- at secure portal server, receiving digitally signed and electronically encrypted bids and storing the received bids in a time locked manner so that the stored bids are accessible only after a specified date and time have elapsed, and all the duly authorized tender-opening officers are present online on the system and have recorded their presence with digital signatures,

- starting an online tender opening event at the portal server that can be attended electronically and simultaneously by authorized officer