IPAB on July 5, 2013 ruled on the patentability of inventions comprising of mathematical methods in Electronic Navigation Research Institute Vs Controller General of Patents and Designs. The case was an appeal filed against the Deputy Controller’s decision to deny patent protection to 3624/DELNP/2005 which related to an invention comprising of a system for analyzing time series signals. The Controller held that the functions of the so-called system are based on a mathematical method for solving mathematical equations, and declined to accept the ‘technical effect theory’ followed under European Patent law, as he was of the opinion that our law does not allow patent for mathematical methods which have a technical effect. The invention was rejected as not patentable under S.3(k) of the Patents Act 1970.
The appellant’s patent application titled “A Chaos Theoretical Exponent Value Calculation System” pertained to a system for analyzing a time series signal by a method based on Chaos Theory and calculating a chaos theory exponent value (CTEV) thereof. The invention makes it possible to calculate CTEV that could not have been so far processed in a dynamics changing system and to perform the process at a high-speed and on a real-time basis. The inventor claims that conventional CTEV calculations systems assumes that the time series signal being analysed is stable and is not chaotic. Certain signals e.g. generic speech voice signals have temporarily changing dynamics because of a plurality of vowels that change the voice signals in a complex manner in a short period of time. The system claimed in the invention in short leads to better analysis of speech voice signals and has applications in speech synthesis applications.
The appellants contended that the invention offers a non-obvious ‘technical solution’ to a technical problem of generic speech analysis and the invention ought to be patentable owing to the fact that Indian law generally follows the European Patent regulations. The ‘technical effect theory’ which is followed by the Boards of Appeal of the EPO, is that an invention is patentable if it provides a new and non-obvious “technical” solution to a technical problem. The problem, and the solution, may be entirely resident within a computer such as a way of making a computer run faster or more efficiently in a novel and inventive way.
IPAB rejected the Appellants arguments and referred to the decision arrived at in Yahoo Vs. Rediff where it was held that “the inventive step must be a feature which is not an excluded subject itself. Otherwise, the patentee by citing economic significance or technical advance in relation to any of the excluded subjects can insist upon grant of patent thereto. Therefore, this technical advance comparison, should be done with the subject matter of invention and it should be found it is not related to any of the excluded subjects….” IPAB also noted the view taken by UK Courts in Gameaccount Ltd., T. 543/2006 where it was held that:
“…It cannot have been the legislator’s purpose and intent on the one hand to exclude from patent protection such subject matter, while on the other hand awarding protection to a technical implementation thereof, where the only identifiable contribution of the claimed technical implementation to the state of the art is the excluded subject-matter itself.”
Thus it was held that invention which is the technical advance was itself nothing more than a “mathematical method” for solving mathematical claims, the identifiable subject matter itself was excluded subject matter under section 3(k) of the act. According, the controller’s decision was upheld and appeal was dismissed by the IPAB.