JUDGMENT

The appellant filed Application No.201641026786 for grant of patent to an invention titled "For selectively concealing physical address information". In response to a request, the First Examination Report (FER) was issued on 15.09.2016. In the FER, objections were raised inter alia on the grounds of lack of inventive step and Section 3(k) of the Patents Act, 1970 (the Patents Act). As regards Section

3(k), the FER recorded that claims 1 to 41 fall within the meaning of "computer programme per se" under Section 3(k). Pursuant to the appellant's response to the FER, the hearing notice was issued on 05.06.2017. In the hearing notice, an objection with regard to sufficiency of disclosure was raised for the first time. As regards the objection under Section 3(k), the objection was maintained, albeit by stating that the claims relate to a business method. Eventually, by impugned order dated 31.07.2017, the application was rejected by referring to Section 3(k) and concluding that the claimed invention is a business method. The present appeal arises in the said facts and circumstances.

2. Learned counsel for the appellant invited my attention to the complete specification and pointed out that the claimed invention relates to privacy and data protection. In order to substantiate this submission, he referred to independent claim 1 and claim 25. He next pointed out that no objection was raised in the FER with regard to sufficiency of disclosure, but such objection was raised in the hearing notice. As regards the objection under Section 3(k), learned counsel submitted that the nature of objection transformed from an objection on the ground that the claimed invention is a computer programme per se to an objection that it is a business method.

3. With regard to the conclusion that the claimed invention is a business method, learned counsel referred to the Guidelines for Examination of Computer Related Inventions (the CRI Guidelines) issued by the office of the Controller General of Patents, Designs and Trade Marks in 2017. By drawing reference to paragraph 4.5.2 thereof, learned counsel submitted that a claim is required to be treated as a business method as per the guidelines, only if it is a business method in substance. By reiterating that the claims relate to a system for selectively concealing information relating to physical address, learned counsel concluded his submissions by stating that the claimed invention cannot be construed as a business method.

4. In response to these submissions, learned counsel for the respondent submitted that Section 3(k) of the Patents Act excludes from patentability claims relating to a business method. By pointing out that the appellant's claims relate to a method of conducting e- commerce business, learned counsel submits that it falls within the scope of Section 3(k). Without making any concession on the merits of the application, learned counsel submitted that the matter may be remanded for a more detailed consideration.

5. The operative portion of the impugned order is as under:

"iv. The claims 1-39 submitted with hearing written submission disclose interaction and communication among user, e-commerce platform, logistic company and delivery executive. The interaction and communication ensures delivery of purchased product to the user by preserving privacy of the user by concealing his physical address at various levels involved in transaction of product from the stage of purchase to delivery.

v. From points (i) to (iv), it is evident that although invention takes care of privacy of the user during transactions to be carried out through e- commerce platform, the claims relates to completion of the transaction i.e. from the stage of purchase of the product to the delivery of the product through the channel of e-commerce platform, logistic company and delivery executive which is purely a business activity. Hence, subject matter of claims 1-39 filed with hearing written submission relates to busines