Fueling Innovation: Madras High Court Clarifies Patentability of Technical Methods in Bosch Case

Introduction

In the judgement of Robert Bosch Limited v. Deputy Controller of Patents and Designs, the interpretation and scope of Section 3(m) of the Indian Patents Act, 1970 were discussed by the High Court of Madras. to the products and invention where the method as such does not lead to the creation of any product. According to Section 3 (m) any activity where cognitive part of the brain is used or where any method of playing games is seen and not the actual product as such, it would not be considered as patent. The Madras High Court took a more balanced and progressive approach to the given case and gave the judgement that Bosch’s patent application would be considered for review as a patent because the application was not just a mental activity but was technical and practical method to the product creation. This decision sets the stepping stone for a more inclusive and progressive interpretation attached to Section 3(m) of the patent law holding that technical advancements with practical application to be granted patent.

Facts of the case

In present appeal, filed by Robert Bosh Limited against the decision given by the DCPD on 07/08/2023, the controller denied the application with regards to the methods of preheating and controlling the Temperature of Fuel Injected into a Combustion Engine. The grounds on which the application was rejected in The First Examination Report was that the product lacked novelty, creative imagination and was excluded from the definition of patents under section 3(m) of the patents act. In response to the examination report Bosch prepared and submitted various documents challenging the objections. But their claims, arguments were denied and the application was rejected by DCPD. The DCPD’s main was that the product or invention could not get patent because they were falling under the exceptions mentioned under section 3.  The present case is a challenge to that by the appellant, Robert Bosch.

Issue

The issue formed was whether the patent application falls under the exceptions to the patent as mentioned under section 3?

Court’s Decision

The court took a broader view and gave the verdict that Section 3(m) is in used to exclude those applications where only rules, procedures, cognitive process or method of playing games did not involve any technical advancement or practical application. Thus, the patent application for Bosch Limited included specific technical process with delineated instructions for preheating and controlling fuel temperature in an engine, which just cannot be rejected as a mere mental activity or cognitive process. Further new claims like lack of inventive steps were included in the hearing notice which were not the part of the final order. On these reasonings the court returned the application to DCPD for further review.

Analysis

Interpretation of Section 3(m) 

As previously stated, “mere scheme, rule, or technique for conducting a mental act or playing a game” is not to be considered for patentability as per provision 3(M)But many authorities were rejecting the patent applications on this ground without even considering whether the said method caused any technical advancement or resulted in practical application for the product. This led to many arbitrary rejections of the patents, discouraging innovation and invention.

 This exclusive meaning went a change when the court in the present case explicitly held that under 3(m) Bosch’s method embraced specific processes of preheating and temperature control of fuel, which was not just a mere mental act. No prior court has taken the practical and technical aspect of 3(m) into consideration while granting decisions for patent applications. It finally removes the confusion with regards to the interpretation of 3 (m).

Technical Contribution as the Litmus Test

The reasoning used in this case aligns with judicial judgements given in respect Section 3(k), which explicitly excludes “computer programs per se” as a patent.  In the case of  Ferid Allani v. Union of India,  the court has held that Section 3(k) of patents act mentions “business system or a computer program or algorithm” should not be granted patent. But later with the evolving time, the government added the words “per se” to it.

This change was done to make it clear that only the computer programs, in itself (like just lines of code with no real-world use), cannot be patented. However, if a computer program is part of a bigger invention or innovation like software that produces a technical application, then it would not automatically be rejected and will have a possibility to get patent.

Likewise in the judgement  Caleb Suresh Motupalli v. Controller of Patents the court has reiterated the reasoning of Ferid Allani that if an invention produces a technical advantage, enhances the system efficiency, and has an impact on hardware, it can get a patent and will not be rejected under 3(k). However, in the case of Caleb Suresh, the invention did lack the technical advancement and was therefore not able to achieve the stated goal of enhancing the product efficiency. When we see the present case with respect to section 3(m) the court has taken the similar reasoning in its judgement. It has reverted the application back to the Patent Office saying that product should not be rejected solely on the ground as a mere mental activity.  The authorities should see whether technical effect or application has been attached to product under application.

Clarifying the Role of Process Claims

DCPD had rejected the application on the grounds that the invention did not “create any product” and only offered a ” mental method.”  The reasoning behind this comes from the  IPAB Order No. 200/2012 which unequivocally states that the product itself, not the manufacturing method, will be granted the patent.This perspective is obsolete and out of date and does not encourage the creation of new ideas and innovations.Its exclusionary nature did not take into consideration whether the process or method leads to any technical advancement or practical outcome. The decision of the court provides a more inclusive approach where the methods leading to efficiency of the product can be granted a patent and would not be rejected for the same automatically. Likewise in the case of  Vifor (International) Limited & Anr. vs Msn Laboratories Pvt Ltd & Anr where the court has laid importance on the fact that that method-based claims are not inherently excluded from the scope of patentability.

 Way Forward

Altogether, this judgement had a positive impact upon the future of Patents in India. It paves a path towards more innovative environment where the technical contribution and its utility is given more importance. To realise this goal trainings should be given to the Authorities who examine the applications so that the innovations are not rejected arbitrary and at preliminary stage which will help to reduce the wastage of time and resources of the applicants. At the last, it is a progressive decision which will require the proper implementation by the authorities.

Author: Pragya Saigal, in case of any queries please contact/write back to us via email to [email protected] or at Khurana & Khurana, Advocates and IP Attorney.