Jitendra Kohli v. The Controller of Patents

1. This hearing has been done through hybrid mode.

2. The present appeal under section 117A Patents Act, 1970 (hereinafter “Act”) has been filed challenging the impugned order dated 12th June, 2020 passed by the Assistant Controller of Patents & Designs. Vide the said order, the Appellant’s application No.3290/Del/2005 has been rejected under Section 15 of the Act.

3. The background of the case is that the Appellant has filed a patent application titled ‘process for conducting electronic tendering on secured platform’ vide provisional application dated 7th December, 2005. The complete specification was, thereafter, filed by the Appellant on 7th December, 2006. However, the First Examination Report (hereinafter “FER”) was only issued by the Respondent 10 years later on 29th January, 2016 in which the grant of patent was objected on the ground of lack of 2022:DHC:1904 novelty, and non-patentability under Sections 3(k), and 3(m) of the Act.

4. In response to the FER, the Appellant filed its reply on 28th January, 2017 and it was brought to the attention of the Assistant Controller that the claims have been amended to overcome the objections raised in the FER. Thereafter, hearing was conducted and the impugned order was passed on 12th June, 2020. The submission of the ld. counsel for the Appellant, Ms. Rajeshwari, is that during the process of examination, the claims which were originally filed by the Appellant, which were 10 in number, were amended. Claim no.1 as originally filed reads as under: “I Claim:

1. A process of tendering system comprising; a secure and open means for the bidder and the buyer in a predetermined time locked event and including the steps of pre-authentication of the bidder/buyer, access to the resources, tendering of bid, monitoring of activities, evaluation of bid and award are integrated over a secure platform.”

5. However, after the amendment, the amended claim No.1 reads as under: “I Claim:

1. A system and process for conducting electronic tendering over a secure platform/portal server in a networked computer system including clients comprising secure and open means for the bidder and the buyer in a predetermined time locked event and including the following steps: (i) pre-authentication of the bidder/buyer by digital signatures, (ii) providing access to the resources of secure platform/portal server via networked computer system after pre-authentication, (iii) securely customizing the system online by each buyer organization for accommodating 'variations in tendering policy, procedures and rules' peculiar to that organization (iv) tendering of bids over secure platform/portal server, (v) integrally evaluating and awarding the bids, wherein tendering of bids includes - at the secure portal server, online configuring of tendering rules for that tender and digitally signing the said rules by the authorized officer of buyer; - at bidder end, electronically encrypting bids using bidder-generated pass- phrase(s) with cryptographic protocol, digitally signing electronically encrypted bids and submitting; electronically encrypted bids and storing the received bids in a time locked manner so that the stored bids are accessible only after a specified date and time have elapsed, and all the duly authorized tender-opening officers are present online on the system and have recorded their presence with digital signatures, - starting an online tender opening event at the portal server that can be attended electronically and simultaneously by authorized officers of the buyer and authorized representatives of bidders from remote locations and in accordance with the rules configured for the said tender, - creating an electronic attendance register with digital signatures of all authorized participants during the online tender opening event, and - opening of each bid by the duly authorized tender opening officer after furnishing of the bidder-generated pass-phrase by the concerned authorised bidder for decrypting the respective stored encrypted and digitally signed bid during the online tender opening event.”

6. Ms. Rajeshwari, submits that the objection under Section 3(k) of the Act in respect of non-patentability, on the ground of it being a business method, has been considered by the Assistant Controller, by taking the claims as originally filed which were in the form of ‘process claims’. When the amendment was made by the Appellant, the claims were changed from ‘process claims’ to ‘system and process claim’. It is her submission that the amended ‘system and process claims’ which were filed later on would not be hit by Section 3(k) of the Act. She further submits that there is a clear ‘technical effect’ which has been disclosed in the application.

7. A perusal of the impugned order shows that the ld. Assistant Controller has considered the unamended claim and has held that the same is a business method. This is clear from a reading of the following paragraphs of the impugned order: