“Review of the Intellectual Property Rights Regime in India” DELHI HIGH COURT

The Court is aware of the 141st Report of the “Review of the Intellectual Property Rights Regime in India” submitted by the Parliamentary Standing Committee3 (hereafter referred to as the “Parliamentary Department Related Parliamentary Standing Committee on Commerce, presented to the Parliament on July 23, 2021”) Opentv Inc vs The Controller Of Patents And … on 11 May, 2023, Delhi High Court

Facts: The respondent, The Controller of Patents and Designs, made the judgement in question on May 31, 2021, and the appellant, OpenTV Inc., has filed an appeal in an effort to have it reversed, among other things. According to Section 15 of the Patents Act, 1970 (hereinafter “the Act”), the impugned order denied the request for grant of a patent titled “System and method to provide gift media” bearing Application No. 2564/DELNP/2012, submitted on March 23, 2012 (hereinafter “subject patent”). The submitted patent application describes a network architecture and a method for operating it to enable the interchange of interactive media content distribution of any kind of digital or physical media. The subject patent application has been rejected on the grounds that the claimed subject matter is not patentable and falls under Section 3(k) of the Act, as well as that the amendment to the claims dated December 10, 2020 does not meet Section 59 of the Act’s requirements. The relevant patent application, bearing the PCT Application No. PCT/US2010/047874, has been submitted in India as a National Phase Application. The PCT application’s international filing date is September 3, 2010, and it claims priority from a US patent application having a priority date of September 3, 2009. On March 23, 2012, the subject patent’s national phase application in India was submitted. On April 20, 2018, a First Examination Report (hereafter, “FER”) containing a statement of objections was published. The Controller objected to the FER in question by citing Sections 3(k) and 3(m) of the Act’s lack of originality, inventive step, and patentability. The Controller also brought up the grounds of insufficient disclosure and definiteness in the claims under Sections 10(4)(c) and 10(5) of the Act in the aforementioned FER. The Controller referenced the previous art document D1, a US Patent with the serial number US2006095338, in support of the claim of lack of innovation. The Controller further cited prior art papers D1 and D2 having the number US2009054092 to support the inventive step objection. On August 2, 2018, the appellant revised the claims in the relevant patent application and submitted a response to the aforementioned FER. In the aforementioned change, the appellant substituted Claims 16–18 for Claims 3, 20, and 21. The Appellant said that the modified claims disclosed a system and method to retrieve and gift a media item from an interface in the aforementioned answer to the FER. According to the appellant, this system and method were unique in comparison to previous art D1 because it includes the added feature of showing several versions of the media item that is being provided to the user for giving. The Appellant asserted that the relevant patent application presented distinguishing features in relation to the previous art publications identified by the Controller in order to overcome the objection brought up under Section 2(1)(ja) of the Act. The Appellant specifically argued that the prior art document D1 did not disclose any methods for receiving instructions or indications over an auxiliary network, and that if such instructions were received in the system used by D1 they would interfere with the communication between the gift provider and the gift recipient, ultimately leading to subpar communication performance. The Appellant said with regard to D2 that no methods for obtaining indications reflecting information linked to recipient details and media item selection had been disclosed through an auxiliary channel. The proceedings in this case took place over a number of days. Ms. Vindhya S. Mani, senior counsel representing the appellant, asserted on April 22, 2022, that the inclusion of dependent claims does not violate Section 59 of the Act. The claims in the range of 16 to 21 are all dependent claims. She cites AGC Flat Glass Europe SA v. Anand Mahajan, paragraph 18, as support. Signature DEVANSHU JOSHI did not certify this. (2009) ILR 4 Delhi 256, to make the case that the dependent claims should be taken into consideration as long as the scope of the claim is not widened and it is within the overall claims that have already been filed. In light of the objection in Section 3(k) of the Act, the question is whether the aforementioned claims are eligible for approval. Reading through the patent specification will reveal that the goal of the invention under consideration is to make it possible to provide media as gifts. This is meant to be explained as follows: Signature by:DEVANSHU JOSHI Not Verified Date of Signature: 12/05/2023, 18:42:02, DHC:3305 [0002] In one example embodiment, the present application pertains to a system and method for giving media as a gift. It also generally refers to the field of electronic communications.[0010] xxxx xxxx xxxx The systems, methods, techniques, instruction sequences, and computer programme products that represent illustrative implementations of the present invention are covered in the following description. As can be seen from the illustration in figures 1 and 3 above, which uses a variety of software applications, the invention in the present case is implemented using a computer programme. However, it is not the software or the computer programme that is the Signature DEVANSHU JOSHI did not certify this. Date of Signature: 12.5.2023, 18:42 2023:DHC:3305 The technique by which the claimed invention is used to give a gift is what is being sought after for patenting.  Examining each of these clauses will reveal that the exclusion of commercial practises is phrased differently as “schemes, rules, or methods for conducting business.” The caveat in Section 1(2) and Article 52(3) to such subject matter governs this exclusion.

Held: The Committee advises the Department to follow the same strategy used in the European Union and the United States for easing patent applications in India, which entails connecting mathematical methods or algorithms to a concrete technical device or practical application. Therefore, it would be simpler to protect mathematical approaches and algorithms as patents if they were transformed in this way from a method to a process. The debate mentioned above in the report of the Parliamentary Committee indicates that there is concern raised regarding the possibility that many ideas could be denied patentability due to Section 3(k) of the Act. This provision’s amendment would undoubtedly fall under the purview of legislation in the context of the aforementioned report. A  non-transitory machine-readable storage media connected to at least one processor, the non-transitory machine-readable storage medium including instructions that, when carried out by the at least one processor, cause it to carry out an operation that includes: receiving a selection of the media item to be gifted at an interactive media component, the selection coming from a user’s client device, and the selection including an indicator of the type of media delivery method and at least one recipient for the media item; depending on the selection of the media item and the at least one recipient, processing a purchase transaction using one or more processors; and causing delivery of the media item to the at least one recipient using the stated media delivery method type. The Court is aware of the 141st Report of the “Review of the Intellectual Property Rights Regime in India” submitted by the Parliamentary Standing Committee3 (hereafter referred to as the “Parliamentary Department Related Parliamentary Standing Committee on Commerce, presented to the Parliament on July 23, 2021”). Signature by:DEVANSHU JOSHI Not Verified ‘Signing Date:12.05.2023 18:42:02 2023:DHC:3305 Committee Report’) that was just released and contains the following information: At the moment, neither the Copyright Act of 1957 nor the Indian Patents Act of 1970 are well suited to facilitating invention, authorship, or ownership by artificial intelligence. A mathematical or business process, a computer programme, or algorithms used by artificial intelligence are not patentable, according to Section 3(k) of the Indian Patent Act, 1970. Additionally, the requirement for human inventorship for computer-related inventions (breakthroughs by AI and machine learning) prevents India from patenting AI-induced innovations. The provisions of both statutes must therefore be reviewed as soon as possible. The Committee observes that in the modern world, particularly during the Covid-19 pandemic, where digital applications are playing a crucial role in responding to the crisis, the relevance and utility of cutting-edge technologies such as Artificial Intelligence (AI) and machine learning would increase significantly.

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