IMPORTANT POINT
The court established that a computer-related invention can be patentable if it demonstrates a technical effect that enhances system functionality, overcoming the exclusion of computer programs per se under Section 3(k).

JUDGMENT :

Senthilkumar Ramamoorthy, J.

PRAYER: This Civil Miscellaneous Appeal filed under Section 117-A of the Patents Act, 1970, prays (i) that this Court set aside the order dated 24.01.2020, passed by the Respondent herein in Application No. 5584/CHENP/2010 dated 07.09.2010 and hold that the claimed invention is patentable subject matter and involves an inventive step and consequently to issue patent on the said application; and (ii) to pass such further and other order(s) as the court may seem fit and proper in the interests of justice.

Background

The appellant filed Indian Patent Application No.5584/CHENP/2010 on 07 September 2010 for the grant of patent for an invention titled 'Associating Command Services with Multiple Active Components'. The said application was published on 08.04.2011. Based on a request for examination dated 05 March 2012, the First Examination Report (FER) dated 23 March 2018 raised objections on the grounds of: lack of inventive step by citing D1 (US US 2005108734 A1), D2 (US 2007209008 A1) and D3 (US2007186212 A1); exclusion from patent-protection under sections 3(k) and 3(m) of the Patents Act, 1970 (the Patents Act); and lack of sufficient disclosure under section 10(5). The appellant filed a response thereto on 01 June 2018 by deleting claims 8 and 10-16 out of original claims 1-20, and by amending and renumbering the remaining claims as 1-12.

2. The hearing notice dated 26 September 2019 raised the following objections, viz., the amendments to the claim are beyond the scope of the claimed invention and therefore violate section 10(5) of the Act; amended claims 1-12 lack inventive step under section 2(1)(ja) of the Patents Act in view of prior arts D1, D2 and a newly cited prior art D4 (20070016857 A1); amended claims 9-12 are excluded under section 3(k) as they constitute computer programme per se and do not involve an inventive hardware. The hearing took place on 1 November 2019, pursuant to which the appellant filed written submissions on 15 November 2019, along with further amended claims 1-11. After the hearing, the application was rejected by impugned order dated 24 January 2020. The present appeal arises in the above facts and circumstances.

Counsel and their contentions:

3. Oral arguments on behalf of the appellant were submitted by Ms. Vindhya Mani, learned counsel, assisted by Mr. Kiran Manokaran and Mr. G. Sheerabhinath, appearing for M/s. Lakshmikumaran and Sridharan Attorneys; and on behalf of the respondents by Mr.S.Diwakar, learned SPC. Both the appellant and the respondent filed written submissions.

4. Learned counsel for the appellant submitted the following: that independent claims 1 and 8 and the other dependent claims provide, inter alia, a method for associating a command surface with active components wherein the command surface is coupled to more than one component on a page, even when the components are associated with different applications, resulting in directing the command to more than one application for processing. The technical problem the invention attempts to address is the inability or inefficiency of conventional systems to process different unrelated applications simultaneously as each component includes its independent command surface to process the respective application. In order to solve this identified problem, the claimed invention provides a system and method wherein the command surface is coupled to more than one component on a page, even when the components are associated with different applications, resulting in directing the command to more than one application for processing. This is achieved by including the user selectable commands on the command surface for performing actions. The system provides a command manager which is configured to identify and acquire the command lists by polling the respective components. Different components/applications are registered to receive notifications from at least one same user selectable command included on the com