Hon’ble Madras High Court Delivers Landmark Ruling on Patentability of Method Claims Under Section 3(m): Method Claims Need Not Always Yield a Product

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Overview: In a significant development in Indian patent jurisprudence, the Hon’ble Madras High Court has clarified the interpretation of Section 3(m) of the Patents Act, 1970., and has delivered its ruling in the case of Robert Bosch Limited v. The Deputy Controller of Patents and Designs. CMA(PT)/1/2024, wherein Robert Bosch Limited (Appellant) sought the set aside of a order impugned order passed on 7 August 2023 by The Deputy Controller of Patents and Designs (Respondent) refusing the grant of Patent to the appellant for an invention titled “Method of Preheating and Controlling the Temperature of Fuel injected into a Combustion Engine”. The judgment in Robert Bosch Limited v. Deputy Controller of Patents and Designs overturns an earlier decision by the Controller rejecting a patent application solely on the ground that the invention was a "mere method" not resulting in a tangible product. The judgment, delivered by Hon’ble Madras High Court, addresses key aspects of patent law, particularly issues surrounding the section 3 (m) of the Patent act 1970."

This ruling emphasizes that genuine method claims based on technical advancement and physical processes are not excluded from patentability, even if they do not culminate in a specific end product.

Appellant Submission:

The appellant submitted that the patent application was eventually rejected solely on the ground that it is excluded from patent protection under Section 3(m) of the Patents Act. He further submits that the claimed invention does not fall within the ambit of Section 3(m).

Further, the appellant submitted that the impugned order passed by the respondent suffers from non application of mind, illogical reasoning and arbitrariness and the impugned order was passed without appreciating all the evidence placed on record and hence is liable to be set aside.

Respondent's Defense:

Respondent reiterates the findings in the impugned order and states that the claimed invention is in respect of a method claim and is “theoretical” in nature and asserting that it lacked technological contribution in terms of tangible invention.

Court's Findings:

The court first examined the impugned order passed by the respondent and found that the claims was rejected on a ground that it is pure method claims and does not result in a product and excluded from the patent protection under section 3 (m) of the patent act.

Further court stated that the language and intention of Section 3(m), which excludes only:

• Mere schemes or rules for performing mental acts.
• Mere methods of playing a game.

The interpretation applied by the Controller, if accepted, would exclude all method/process claims, contrary to the legislative intent. The Patents Act provides protection not only to product claims but also to process claims.

Further reviewing, the Court found:

It was a method involving a sequence of physical steps to pre-heat fuel before injection into an engine. The method was clearly technologically grounded and not a mere mental act or game rule. The claim did not fall within the exclusionary ambit of Section 3(m).

Conclusion:

In this case, the Hon’ble Madras High Court clarifies the interpretation of the section 3 (m) of the Patents Act, 1970, and emphasized that not all method claims are excluded by the section 3 (m) and the patent act does not mandated that the pure method claims without an end product constitutes as non-patentable subject matter. Method grounded in physical processes and technological advancement remains validity within the ambit of patent protection.