An invention must demonstrate novelty and an inventive step to be patentable; mere refinement of existing methods does not suffice.

JUDGMENT :

(SENTHILKUMAR RAMAMOORTHY, J.)

This appeal is directed against the order dated 13.03.2023 dismissing Patent Application No.951/CHENP/2013. The said application was filed by the appellant herein for grant of patent for an invention titled “TREATMENT RELATED QUANTITATIVE DECISION ENGINE”.

2. Upon request by the appellant, the respondent issued a First Examination Report (FER) dated 21.11.2019. In the FER, objections were raised inter alia on grounds of lack of novelty, lack of inventive step, exclusion under Section 3(k), lack of clarity and conciseness under Section 10(5) of the Patents Act, 1970 (the Patents Act). The appellant responded to the FER on 21.08.2020 and submitted amended claims. Pursuant to hearing notice dated 13.12.2021, the appellant submitted written submissions on 22.02.2022 by enclosing current claims 1 to 28. These claims were rejected by the order impugned order herein.

3. Learned counsel for the appellant submitted that the impugned order erroneously concluded that the appellant's claims relate to an algorithm or computer programme per se or business method in terms of Section 3(k) of the Patents Act. By referring to the judgment of the Delhi High Court in Microsoft Technology Licensing v. Assistant Controller of Patents and Designs, 2023 SCC OnLine Del 2772, particularly paragraph 47 thereof, learned counsel contended that claims cannot be rejected solely on the ground that the claims relate to computer executable instructions or algorithms that are performed on a general purpose computing device. He also submitted that the Delhi High Court concluded that if the claims are in respect of a computer programme which results in a technical effect that improves the computer system's functionality and effectiveness, it cannot be rejected as being a computer programme per se.

4. He next submitted that the rejection on the ground that it is a business method is completely erroneous. By referring to paragraph 74 of the Delhi High Court in Open TV Inc. v. The Controller of Patents and Designs, 2023 DHC 3305, learned counsel submitted that an invention would be excluded as being a business method only if it is intended primarily to enable conduct or administration of a particular business and if the purpose of the invention is for claiming exclusivity or monopoly over a manner of doing business. He also relied upon the judgment of this Court in Priya Randolph v. Deputy Controller of Patents, 2023:MHC:5450, to contend that the monopoly claim is not in respect of a method of conducting business.

5. As regards the conclusion that the claimed invention lacks an inventive step, the first submission of learned counsel was that the respondent committed an error in the identification of the persons skilled in the art (PSITA). According to him, in view of the nature of the invention, a PSITA team should have been formed by including a medical expert therein. With regard to prior art documents D1 and D3, learned counsel contended that the claimed invention would not be obvious to PSITA from either of these prior arts. He distinguished D3 by pointing out that D3 involves patient interaction whereas the claimed invention does not. As regards prior art D2, he contended that prior art D2 is limited to grading and providing scores for alternative medicines. By contrast, he submitted that the claimed invention is more complex and even provides for grading of the experts, whose opinion is sought and relied upon for purposes of generating a report for the patient. Therefore, he concluded his submissions by reiterating that the claimed invention would not be obvious to PSIT