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Judgment
S. Usha, J
Appeal is against the order dated 03/02/2010 passed by the Assistant Controller of Patents and Designs refusing to grant the patent under section 15 of the Patents Act, 1970 (hereinafter referred to as the Act).
The brief facts of the case are-
On 21/05/2004, the appellant filed an International Patent Application No. PCT/EP/2004/050889 under the Patent Cooperation Treaty (PCT) for an invention titled "Secure Traffic Redirection in a Mobile Communication System". The appellant had filed the Indian National Phase application with the Indian Patent Office on 18/11/2005 numbered as 5294/DELNP/2005, based on the aforesaid International and Swedish applications.
3 . On 03/06/2008, the First Examination Report was issued by the Patent Office raising the following objections.
(1) Claims 1 to 11 do not constitute an invention under section 2(1)(j) of the Act as the claims lack novelty in view of the cited document No. WO03015360.
(2) Each of the claims 9 to 11 relates to an independent invention.
(3) Claims are not properly worded.
Apart from these objections there was no other substantial objections raised.
5 . On 29/09/2008 the appellants replied to the objections. As regards the novelty objection the appellant amended claim 1 by merging the features of claim 3 in claim 1. In response to objection for independent invention for claims 9 to 11 the appellant had deleted claims 9 to 11 and introduced a new apparatus claim 8 corresponding to independent method claim 10.
6 . On 28/05/2009, the appellant had a discussion with the Examiner orally and the Examiner maintained the objection that the claims do not satisfy the requirements of unity of invention as the application contained two independently worded claims - claims 1 and 8 wherein claim 8 was equivalent to original claim 10 which was earlier objected as being distinct from claim 1. The Examiner also expressed that the invention as claimed in the amended claims 1 to 7 amounted to computer program per se as per section 3(k) of the Act and thus not an invention.
7 . On 01/06/2009 the appellant had replied to the oral objections and explained in detail why the invention claimed in the fresh set of claims 1 to 7 was not a computer program per se as per section 3(k) of the Act. The technical effect achieved by performing each step of methods as claimed in the claim 1 to 7 and also the necessity of hardware for performance of those steps were explained in detail. The appellant withdrew claim 8 to address the objection of lack of unity of invention.
8 . The appellant again had discussion with the Examiner and explained in detail the submissions made in the response dated 01/06/2009. Thereafter the Examiner agreed that the invention was not a computer program per se and thus was outside the ambit of section 3(k) of the Act. Thus the objections were removed.
9 . On 16/06/2009 the appellant received a notice of hearing for the date on 03/08/2009 which had no clear objections for which the hearing was fixed. On 18/06/2009 the appellant requested the Examiner to provide the objections if any which need to be addressed in the proposed hearing as there was no mention in the hearing notice. The Examiner replied back on 24/06/2009 fixing the hearing date on 28/07/2009 instead of 03/08/2009 merely stating that the claim falls under section 3(k) of the Act. No gist of the objections were provided as per the provisions of the Act.
10 . The respondent i.e. the Examiner merely stated that the invention is not patentable under section 3(k) of the Act and that the invention is not patentable under section 2(1)(j) of the Act without providing a list of closest prior art documents that are pertinent to the claimed invention.
11 . At no point of time during the prosecution of the application fairness in the procedure were applied by the Examiner. The entire process of the prosecution resulted in the impugned order which is in complete violation of principles of natural justice. On this ground, the impugned order deserves to be set aside.
On 18/01/2010, the Examiner indicated that claims 1-7 amounted to computer program per se and hence not an invention. Except this statement, the Examiner did not provide any reason for maintaining the objections especially in view of the submission made by the appellant on 01/06/2009. No reason or clarification provided for retaining this objection.
In fact, the Examiner had waived the objection that the invention claimed falls within the purview of computer program per se after detailed arguments were heard. During the arguments the appellant had argued that the claims of the invention is not directed to an algorithm rather related to a technical process. The transformation test must be applied and if such transformation test is applied, it can be noticed that the claimed method does not fall within the category of algorithm. Appellant explained that the claimed invention offers a technical solution to a technical problem existing in the area of wireless mobile communication. Appellant explained that a rejection of the claims under the category of algorithm will be contrary to the laws of estoppel.
After the arguments on 18/01/2010, the appellants requested for some time to consult the inventor to reply to the objections that the invention was directed to algorithms. The respondent agreed to the same and granted time to file their fresh submissions.
But even before the fresh submissions were filed the respondent had passed the impugned order without giving any explanation, refusing the application on the ground that the invention claimed in claims 1-7 was directed to algorithm.
The impugned order was passed without giving an opportunity to the appellant to answer to the objections raised on the date of hearing. The impugned order is non-speaking order without any reasoning.
1 7 . The counsel for the appellants submitted the entire facts and stated that the impugned order was in violation of the principles of natural justice where no opportunity was given to the appellant to explain their case nor was there any reasoning given for passing such an order.
We have considered the arguments.
We extract the impugned order hereunder which seems to be a vague order with no reasoning.
On record are claims 1 through 7 directed toward a method of securely initializing subscriber and security data in a mobile routing system when the subscribers are also subscribers of a radio communication network. The applicant was called for a hearing under section 14 of the statute to present his argument against the official objection under section 3(k) on these claims. This objection was communicated to the applicant in a letter dated 24/06/2009. On considering the facts of the case, the oral arguments made in the hearing and the written response of the applicant on record, I am of the view that the method of claims 1 through 7 is a group of algorithms recited in steps for a claim over these algorithms. Claim 8, which was deleted by the applicant during the proceedings before the patent office, was directed towards a stable forwarding agent which had means that were not physical in nature but rather they represented algorithms. As the same means perform the steps of method, each step of the method recited in claims 1 through 7 that are on record is algorithm(s). The statute under section 3(k) debars patenting of algorithms regardless of they being claimed as such or otherwise. I, therefore, refuse the grant of patent on this application under section 15 of the Patent Act, 1970 (as amended).
On a plain reading of the order, there is no reason given for any of the findings. We would rather not call it a finding as it is only a statement. The hearing notice dated 15/06/2009 does not mention any objection except for the date of hearing. This Board in a Judgment - OA/23/2010/PT/DEL Resprotect GMBH vs. The Controller of Patent and Designs has held, "it is better that the notice of hearing indicate what are the prior art that the Controller will be referring to which the inventor has to explain and prove the patentability of the invention."
The Controller has not given any reason. That apart, the appellant had written to the Controller on 18/06/2009 requesting to issue a gist of objections. The First Examination Report nor the hearing notice dated 16/06/2009 raise the objection under section 3(k) of the Act.
2 2 . We think the appellant should have been given an opportunity to place his submissions. The appellant should have been given an advance notice of the objections. Having not done so there is definitely violation of principles of natural justice. We think it fit to remand the matter back to the Controller for deciding the matter afresh in accordance with law.
In view of the above reasons, the appeal is allowed and the impugned order is set aside. Consequently the matter is remanded back to the Controller to afford proper opportunity to the appellant and to decide the matter in accordance with law. No order as to costs.