JUDGMENT

This appeal is directed against order dated 24.08.2017 rejecting Patent Application No.7133/CHENP/2009 for grant of patent to an invention titled "Methods for Acquiring Billing and Usage Data in an IMS Environment". Upon request by the patent applicant, First Examination Report (FER) dated 18.03.2015 was issued. In such report, objections were raised inter alia on the grounds of lack of novelty and inventive step by citing prior art documents D1 and D2, and on the ground that the claimed invention is excluded from patent protection under Section 3(k) of the Patents Act, 1970 (the Patents Act). The appellant replied to the FER on 25.11.2015 and also submitted amended claims. Upon considering the appellant's reply, by hearing notice dated 02.06.2017, the objections on the grounds of lack of novelty and inventive step were dropped but the objection on the ground of Section 3(k) was retained. The impugned order was issued in the above facts and circumstances.

2. Learned counsel for the appellant submits that the claimed invention identified the problem to be resolved as a method of verifying call signalling messages so as to prevent fraud and enable accurate identification without being dependent on the billing system for such purpose. By referring to paragraph 8 of the written submissions and figure 3, which is set out therein, learned counsel submits that the claimed invention clearly represents a technical advancement over prior art and provides a solution to the problem identified in the complete specification.

3. By referring to the impugned order, learned counsel submits that the Controller completely misconstrued the scope of Section 3(k) by holding that the monopoly claim is directed at a method of conducting business. In support of this contention, learned counsel referred to and relied upon an earlier order of this Court in Priya Randolph v. The Deputy Controller of Patents, (Priya Randolph') 2023:MHC:5450. He also relies upon the judgment of the Delhi High Court in Microsoft Technology Licensing, LLC v. The Assistant Controller of Patents and Designs, 2023:DHC:3342, for the proposition that a claimed invention implemented on a general purpose computer may nonetheless qualify as an invention provided there is a technical effect that improves the technical system on a functional basis.

4. Mr.J.Madanagopal Rao, learned SPC, responded to these contentions by relying on the counter affidavit. In particular, he submitted that the claims of the appellant, in substance, relate to business methods, and that the Section 3(k) objection cannot be overcome merely by reference to technological terms and expressions. He further submits that the concept of the claimed invention fall entirely within the realm of business transaction concepts.

5. Independent claim 1, as rejected, is as under:

“1. A method for acquiring billing and usage data in an Internet protocol (IP) multimedia subsystem (IMS) environment, the method being performed at a network entity (NE) (200), the method comprising;

copying (100), upstream from a billing system (BS), a call signaling message and an IMS accounting message relating to an IMS transaction; and providing (102) the copied messages to an application (210) for one of billing verification, fraud detection, revenue assurance, and data analysis.”

6. Upon considering the current claims of the appellant, including the above extracted independent claim 1, in relevant part, it was recorded as under:

“The term “Business Methods” involves whole gamut of activities in a commercial or industrial enterprise relating to transaction of goods or services. With the development of technology, business activities have grown tremendously through e-commerce and related B2B and B2C business transactions. The claims are at times drafted not directly as business methods but apparently with some technical features such as internet, networks, satellites, tele-communications etc. This exclusion applies to all business methods an