Court emphasized necessity for reasoned reconsideration per patent eligibility standards outlined in Section 3(k), as clarified by prior rulings.

JUDGMENT

In this appeal, the appellant impugns order dated 18.05.2020 rejecting patent application No.2416/CHE/2009 for grant of patent for an invention titled as “TWO-STAGE MODEL PREDICTIVE CONTROL TECHNIQUE”.

2. Upon request from the appellant, the respondent issued First Examination Report (FER) dated 26.03.2018. In such report, objections were raised inter alia on grounds of lack of novelty and inventive step by citing prior arts D1 and D2; non-patentability under Sections 3(k) and 3(m) of the Patents Act, 1970 (the Patents Act); and non-compliance with the requirement of Section 10(4) in respect of claim 45. The appellant responded to the FER on 26.09.2018. By such response, the appellant pointed out that original claims 2, 12, 27 & 45 were being deleted. The appellant set out reasons to justify the assertion of novelty and inventive step. As regards alleged non-patentability, the appellant stated that method claims 1 to 19 are not a mere scheme and, therefore, outside the scope of Section 3(m) of the Patents Act. As regards independent claims 1, 18 & 33 and claims dependent thereon, the appellant stated that the said claims were directed at hardware and do no fall within the scope of Section 3(k) of the Patents Act. This was followed by hearing notice dated 23.01.2020 in which the objections relating to lack of inventive step and non-patentability under Section 3(k) were retained. The appellant filed written submissions after the hearing. The order impugned herein was issued in these facts and circumstances.

3. Learned counsel for the appellant invited my attention to the impugned order and contended that the appellant's reply to the FER and written submissions were completely disregarded. He points out that the application was refused under Section 15 by merely drawing reference to the CRI guidelines. He further contends that the judgments of the Delhi High Court and this Court with regard to the manner in which Section 3(k) should be interpreted were completely disregarded. In particular, reference was made to the following judgments:

(i) Ferid Allani v. Union of India and others , 2019 SCC OnLine Del

11867, (ii) Microsoft Technology Licensing, LLC v. Assistant Controller of Patents and Designs , 2023 SCC OnLine Del 2772, and (iii) Microsoft Technology Licensing LLC, One Microsoft Way v.

Assistant Controller of Patents, Patent Office, 2024 SCC OnLine Mad 2785.

4. In response to these contentions, learned counsel for the respondent submits that computer programmes per se are excluded from the patent protection as per Section 3(k) of the Patents Act. He further submits that guidelines were framed by the Patent Office with regard to computer related inventions, and that the claimed invention does not meet those requirements. Since the independent and dependent claims of the appellant are in the nature of pure computer programmes or algorithms, he states that the claimed invention is excluded from patent protection.

5. The refused independent claims of the appellant are set out below:

“Claim 1 A method of controlling a set of process variables within a process (50), the method comprising:

storing a set of process variable set points for the set of process variables and a process model (56) for the process (50);

receiving a set of measured process variable values for the set of process variables; and implementing a multiple-input/multiple-output control procedure using the set of process variable set points and the set of measured process variable values to develop a control signal for use in controlling the process, characterized by:

simultaneously (i) using the stored process model (56) and a first model predictive control procedure incorporating a first objective function to develop a fe