An invention comprising computer software or related to electronic transactions is patentable under Section 3(k) of the Patents Act if it demonstrates a technical effect or provides a technical solution to a technical problem, as the term 'per se' restricts patentability only to programs without such technical contributions.

1. The present appeal filed under Section 117A of the Patents Act, 1970 (hereinafter the „Patents Act‟) is directed against the order dated 25th August, 2022 passed by the Assistant Controller of Patents and Designs (hereinafter the „Controller‟) under Section 15 of the Patents Act.

2. By way of the impugned order, the Patent Application filed on behalf of the appellant vide Application No. 201611000234, titled as “Methods and Devices for Authentication of an Electronic Payment Card using Electronic Token”, (hereinafter the „Subject Application‟) has been refused on the ground that Claims in the application are in the nature of a „business method‟ and „computer programme per se‟ and hence not patentable under Section 3(k)¹Section 3 What are not inventions: The following are not inventions within the meaning of this Act,— … (k) a mathematical or business method or a computer programme per se or algorithms; of the Patents Act.

BRIEF FACTS

3. Brief facts necessary for deciding the present appeal are set out below:-

3.1. The appellant filed the application no.201611000234, titled as “Methods and Devices for Authentication of an Electronic Payment Card using Electronic Token” on 4th January, 2016, with the Patent Office, New Delhi.

3.2. Along with the subject application, the appellant also filed a request for Examination with respect to the Subject Application.

3.3. The Patent Office issued a First Examination Report („FER‟) dated 17th June, 2020, in terms of which objections were raised on the grounds, inter-alia, lack of inventive step under section 2(1)(ja) of the Patents Act. Furthermore, an objection under Section 3(k) of the Patents Act was also taken citing that the invention is not patentable.

3.4. A detailed response along with the amended set of Claims and other formal documents were filed on behalf of the appellant on 14th June, 2021.

3.5. On 5th April, 2022, the respondents issued a hearing notice fixing the date of hearing for 6th May, 2022, retaining the objections as mentioned in the FER.

3.6. The appellants filed written submissions along with other documents on 20th May, 2022.

4. The impugned order dated 25th August, 2022 was passed by the Controller rejecting the subject application on the ground that the Claims 1-30 are not patentable under Section 3(k) of the Patents Act. The relevant portion of the impugned order is set out below:

“A. Business Method and computer program per se:

In particular, subject matter of the present invention is related to commercial transactions, comprising a processing unit coupled to a memory element, and having instructions encoded thereon, wherein the instructions cause the computer accessible medium to perform operations that comprise: receiving by a first receiving unit in response to a prior request for electronic token received from the electronic payment card by the mobile device via a second communication link when the electronic payment card is in close proximity to the mobile device; generating an electronic token including a time period indicating a validity of the electronic token; associating the electronic token with the electronic payment card, wherein the electronic token is adapted to be stored in a memory of the electronic payment card; and transmitting the electronic token to the mobile device. The actual contribution lies purely in the software part of performing electronic payment, therefore falls within the provisions of section 3 (k) of the Patents Act 1970 and hence are not patentable. I also do