Role of Section 3(k) in Patent Application by Apple Inc.

This article focuses on the involvement of Section 3(k) in the process of patent application of Apple titled ‘a method for browsing data items with respect to a display screen associated with a computing device and an electronic device’. For reference to those unaware of this section, S 3 of the Indian Patents Act, 1970 bars patent eligibility of some inventions.,

Section 3 (k):

A mathematical or business method or a computer programme per se or algorithm;

Bibliographic Details:

 Patent Application number  461/KOLNP/2009
 Title  A method for browsing data items with respect to a display screen associated with a computing device and an electronic device
 Applicant  Apple Inc.
 Date of Filing  03/02/2009
 Date Of Publication  15/05/2009
 Date of First Examination  Report  13/3/2014
 Date of Grant of Patent  08/05/2017

Claims:

Apple stated that their method involves a graphical user interface which generally consists of a text-based browse window which allows the user to browse through and select a particular media track on electronic devices, including cell phones. This media-management program could be linked with an online media store so as toallow the user to purchase new media which could also be transferred to the devices.

The following objections were raised in First Examination Report with respect to Section 3(k):

1. Due to the absence of technical features in the claims disclosed, it is not patentable. The said objective of this alleged invention was to browse media content with multiple browsers whose operations are synched, the alleged invention relates to a GUI wherein the contents of first and second browse windows are synched automatically. Thus being a software program itcomes under the ambit of computer programs per se i.e., the clause of section 3(k) of the Act.
2. Due to the lack of novelty or any inventive featuresin the claims with respect computer readable material, this alleged invention is not allowable u/s 3(k) of the Act.

Apple’s Reply to First Examination Report (above-mentioned claims):

Apple contended that “the claimed ‘method’ consisted of concrete and tangible steps of providing … , displaying … , receiving … , moving … , etc., to thereby browse data terms with respect to a display screen associated with a computing device. These steps ought to be considered as a practical application of computer program. Although the steps of the method can be performed by means of software, the method constitutes a practical application of this computer software to produce a useful result bringing an improved technical effect while presenting advantages and overcoming drawbacks of the hitherto known techniques.”

It further submitted that even if it this method employs software or algorithms for controlling the steps for achieving the desired result/effect having a sufficiently qualified technical character, does not make it eligible for exclusion from patentability. This method permits the computer program’s functionality to be realized, and should not therefore be deemed to be a computer program per se and thus should be patentable.Additionally, Apple admitted to have deleted the ‘computer readable medium’ claims from the specification.

Hearing Notice:

However, the Patent Office notified the Applicant of the above mentioned objections to be outstanding and set a Hearing Date for 04/06/2017.

Controller’s Decision:

The Kolkata Patent Office observed the response to First Examination Reportand accepted Apple’s submission of the invention being novel and not a computer program per se, thus granting it a patent.

Analysis:

This case is a classic example where the Patent Office has interpreted the words “computer program per se” to include software programs. However, it is observed that even though this objection is raised in the First Examination Report , once the Applicant amended the claims so to as to specify the inventive steps involved in the said ‘method’ and explained the technical contribution of the said method making it an invention, it was accepted by the Patent Office. This change is credited to CRI Guidelines of 2016, wherein computer programs are patentable if they are ‘in conjunction with novel hardware’. The terms used to explain novelty are “technical improvement of prior art/forms/methods”. Many companies like Facebook and Google have utilized this new interpretation of the sectionto their benefit by using terms like “technical improvement of prior art/forms/methods” to explain novelty.In conclusion one can say that as long as your invention is fulfilling the novel hardware criterion, the fact that a software program may be involved with the invention will not be an issue.

Author: Ms. Avadhi Jain, intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us atswapnils@khuranaandkhurana.com.

References:

[1]http://www.financialexpress.com/industry/apple-gets-itunes-like-indian-patent-for-media-programme/663075/

[2] http://ipindiaservices.gov.in/decision/461-KOLNP-2009-36006/461KOLNP2009.PDF

 

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