The recent decision in Bosch v. The Deputy Controller of Patents prompted a closer lookโnot just for its resolution under Sec. 3(m), but also for the thought it raises: could the invention have been treated differently if it had been classified by IPO under another domain?
Sec 3(m) of the Indian Patents Act excludes from patentability โa mere scheme or rule or method of performing a mental act or method of playing a game.โ
The present invention, however, claimed a method for:
– Measuring fuel and ambient temperatures using sensors
– Calculating and applying heating power to a fuel heater
– Controlling the temperature of the injected fuel
– Enabling engine startup based on fuel temperature reaching a predefined threshold
Although involving an ‘๐ฎ๐น๐ด๐ผ๐ฟ๐ถ๐๐ต๐บ๐ถ๐ฐ’ ๐๐ฒ๐ฐ๐ต๐ป๐ถ๐ฐ๐ฎ๐น sequence and having ๐ต๐ฎ๐ฟ๐ฑ๐๐ฎ๐ฟ๐ฒ components, this case was classified under the ‘๐๐ต๐ฒ๐บ๐ถ๐ฐ๐ฎ๐น’ ๐ณ๐ถ๐ฒ๐น๐ฑ of invention and was treated accordingly and ultimately refused under Section3m and other grounds.
๐ช๐ต๐ ๐๐ฎ๐ ๐ถ๐ ๐ฟ๐ฒ๐ณ๐๐๐ฒ๐ฑ under 3(m)? The method was viewed as ‘๐๐ต๐ฒ๐ผ๐ฟ๐ฒ๐๐ถ๐ฐ๐ฎ๐น’ and ‘๐ป๐ผ๐ ๐ฟ๐ฒ๐๐๐น๐๐ถ๐ป๐ด ๐ถ๐ป ๐ฎ ๐ฝ๐ฟ๐ผ๐ฑ๐๐ฐ๐.’
The applicant appealed. The Madras High Court ๐ฑ๐ถ๐๐ฎ๐ด๐ฟ๐ฒ๐ฒ๐ฑ with the refusal and set aside the rejection.
It held: โThe method claim is in respect of a claimed inventive ๐ฝ๐ฟ๐ผ๐ฐ๐ฒ๐๐ ๐ฐ๐ผ๐บ๐ฝ๐ฟ๐ถ๐๐ถ๐ป๐ด ๐ฎ ๐๐ฒ๐ฟ๐ถ๐ฒ๐ ๐ผ๐ฟ ๐๐ฒ๐พ๐๐ฒ๐ป๐ฐ๐ฒ ๐ผ๐ณ ๐๐๐ฒ๐ฝ๐, and cannot be characterized as a mere method of performing a mental act. Therefore, it clearly does not fall within the scope of Section 3(m) of the Patents Act.โ
The Court sent the matter for fresh examination, specifically excluding any objection under 3(m).
The ๐ฐ๐น๐ฎ๐ฟ๐ถ๐๐ this case brings is subtle but significant: ๐ ๐ฒ๐๐ต๐ผ๐ฑ๐ ๐ถ๐ป๐๐ผ๐น๐๐ถ๐ป๐ด ๐ฎ ๐๐๐ฟ๐๐ฐ๐๐๐ฟ๐ฒ๐ฑ ๐บ๐ฒ๐๐ต๐ผ๐ฑโ๐ฒ๐๐ฒ๐ป ๐ถ๐ณ ๐๐ต๐ฒ๐ ๐ฑ๐ผ ๐ป๐ผ๐ ๐ฐ๐๐น๐บ๐ถ๐ป๐ฎ๐๐ฒ ๐ถ๐ป ๐ฎ ๐ฝ๐ต๐๐๐ถ๐ฐ๐ฎ๐น ๐ฝ๐ฟ๐ผ๐ฑ๐๐ฐ๐โ๐ฎ๐ฟ๐ฒ ๐ป๐ผ๐ ๐ฒ๐
๐ฐ๐น๐๐ฑ๐ฒ๐ฑ ๐๐ป๐ฑ๐ฒ๐ฟ ๐ฏ(๐บ).
But the case also prompts a broader reflection around its refusal by the IPO: ๐ช๐ต๐ฎ๐ ๐ถ๐ณ this invention had been initially classified under domain โ๐๐น๐ฒ๐ฐ๐๐ฟ๐ผ๐ป๐ถ๐ฐ๐โ or โ๐๐ผ๐บ๐ฝ๐๐๐ฒ๐ฟ ๐ฆ๐ฐ๐ถ๐ฒ๐ป๐ฐ๐ฒโ?
In such areasโincluding embedded control, signal processing, AI and other software related inventions โmethod claims often do not produce a physical product, yet are treated as patentable because they achieve technical outcomes through repeatable, measurable steps.
Could this method, then, have been treated differently had the application been classified and treated through those domains instead?
If so, perhaps the ๐ฏ๐ฟ๐ผ๐ฎ๐ฑ๐ฒ๐ฟ ๐๐ฎ๐ธ๐ฒ๐ฎ๐๐ฎ๐ is not just that method claims are patentable even if they do not “produce a product”โbut also that an inventionโs initial classification at the IPO might shape its outcome too.
Read more at: https://www.linkedin.com/posts/rahuladey_robert-bosch-vs-the-deputy-controller-of-ugcPost-7312701426399420416-uV2n?
