INDIAN METHOD PATENTS
methods. Te application dealt with a series of steps involved in hedging risks associated with commodity transactions involving energy. Te application had been rejected by the examiner on the ground that: firstly, the steps were not implemented on a specific apparatus and, secondly, the application only manipulated an abstract idea. In appeal, the examiner’s decision was upheld but only on the latter ground that it did not transform physical subject matter. Te Federal Court also rejected the application on the ground that it was neither tied to a machine nor transformed an article into another state (the machine or transformation test).
However, the Supreme Court, while affirming the decision to reject the patent, stated that the machine or transformation test cannot be regarded as the sole test, particularly in today’s information age. In order to open doors for as yet unknown classes of inventions, it is essential to not limit the test for patentability. Justice Kennedy observed that if the test were to be treated as exclusive, it would affect the patentability of soſtware, diagnostic methods, data compression techniques et al.
Regarding the patentability of business methods, the judges stated that following the ordinary
meaning of the term ‘processes’, a business method could qualify, and in the absence of any statutory directive against the same, it must be considered patentable subject matter, in principle.
In Bilski, the application per se, which dealt primarily with the manipulation of an abstract idea, was considered to be unpatentable. However, the judgment has clarified business method patents in India.
Tis decision is important in the Indian context, since its principles can apply to the Indian situation to a large extent. Despite the existence of Section 3(k), it can be argued that a business method may be patentable in India if it is tied to a machine or apparatus. Since the US Supreme Court determined that relying solely upon the machine or transformation test would be a narrow interpretation of the law, it will be interesting to see how this argument would work in India.
Anuradha Salhotra is managing partner at Lall Lahiri & Salhotra. She can be contacted:
salhotra@lls.in
Anuradha Salhotra, managing partner and among the founders of Lall Lahiri & Salhotra, has over 26 years’ experience of handling all forms of intellectual property rights. She is also an advisor in areas of licensing and technology transfer and prosecution work for both trademarks and copyright. Salhotra has advised several Fortune 500 companies in intellectual property matters, whether contentious or non-contentious. She leads the firm’s litigation department in its most complex IP litigations. She is also one of the founders of the Institute of Intellectual Property Research and Practice. She has delivered several presentations and lectures on intellectual property rights in India and abroad.
www.worldipreview.com
World Intellectual Property Review September/October 2010
59
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