JUDGMENT

SANJEEV NARULA, J. (Oral)

1. The present appeal is directed against order of the Assistant Controller of Patents and Design (Respondent) dated 18 November 2019 (“Impugned Order”) under Section 15 of the Patents Act, 1970 (“Act”) refusing Appellant’s patent application 1983/DELNP/2008 for the invention titled “FILTERING USER INTERFACE FOR A DATA SUMMARY TABLE”.

2. In the hearing notice, the Controller raised objections on the following grounds: (A) Section 2(1)(j) of the Act, asserting that the invention lacks inventive steps in light of the prior arts, cited as D1 to D4. (B) The invention being a "computer program per se" is non-patentable under Section 3(k) of the Act; and (C) subject matter of amended claims 1 to 9 are excluded as per Section 3(n) of the Act (presentation of information). However, the Controller finally rejected the application under Section 3(k) of the Act, without delving into the other objections.

3. The Court has heard counsel for parties. Controller’s reasoning in support of findings rendered by him are as follows:

“Regarding objection no. 9 |section 3(K)|:-

Amended claims 1-10 still objected to as being non-statutory subject matter under the provisions contained in section 3 (k) of the Patents act 1970.

The present invention (i.e., as claimed in claim 1 and claim 9) involves processing large amount of primary data based on one or more filter options as has been claimed in claim 9. Furthermore, the present subject matter also involves determining the data type of the data present within one or more field and automatically moving the field into the appropriate zone within the layout pane.

Pertinent Section of the statute:

The section 3(k) of Patents Act is quoted below for reference:

a mathematical or business method or a computer program per se or algorithms. The section proscribes patenting of matter falling under any of the categories mentioned above. Admittedly, the matter does not relate to a mathematical or business method. However, whether it pertains to category titled computer program per se is an inquiry which I would make in the light of the facts pertinent to this case.

In the recently published guidelines for examining the computer related inventions, the test indicators to determine patentability are:

1. Properly construe the claim and identify the actual contribution;

2. If the contribution lies only in mathematical method, business method or algorithm, deny the claim;

3. If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.

If I read through the principal claim 1 and 9, I find that there is a general purpose computer system, in which method steps are executed.

From the above paragraph, it is clear that the actual contribution of the invention solely lies in software and there is no specific hardware available in the claimed invention. All the steps of the invention are carried out by computer program only. The only hardware mentioned in the present invention are the general purpose computer system, which comprises processor which executes program in a conventional or normal manner.

Applicant's submission that the present invention complies with the official requirements set forth by the Hon'ble Delhi High Court in Ericsson vs. Intex (order in CS (OS) No. 1045/ 2014 dated March 13, 2015). The order holds that, 'Thus, it is appears to me prima facie that any invention which has a technical contribution or has a technical effect and is not merely a computer program per se alleged by the defendant and the same is patentable.' In this regard, it is stated that claimed invention does not qualify the said