Summary
In a decision that reviewed the distinction between business concepts and technical inventions, the Madras High Court set aside the rejection of Tekelec Inc.’s patent application relating to the processing of billing and usage data under Section 3(k) of the Patents Act. The Court found that the invention was not a business method as concluded by the Patent Office, and directed a fresh examination limited to whether the claims fall within the exclusions for computer programs per se or algorithms
The Invention and Rejection
Tekelec’s application (No. 7133/CHENP/2009) pertained to a method for acquiring billing and usage data in an IP Multimedia Subsystem (IMS) environment. The invention proposed copying call signalling and IMS accounting messages upstream from the billing system, and routing them to an application for use in billing verification, fraud detection, revenue assurance, or data analysis.
The Patent Office issued a First Examination Report in March 2015, raising objections on lack of novelty, inventive step, and ineligibility under Section 3(k). After amendments and reply by the applicant, the objections on novelty and inventive step were withdrawn. However, the objection under Section 3(k) was maintained, and the application was refused in August 2017.
The Controller’s order concluded that the invention related to a business method, framed within the context of billing and financial transactions, and implemented using software and algorithms. The order relied on the Claim Construction Guidelines (CRI Guidelines) to support the view that use of technical terms does not override the underlying business nature of an invention.
The Court’s Evaluation
The Court examined the claims, particularly independent claim 1, and disagreed with the Patent Office’s finding that the invention was a business method. It noted that the invention aimed to solve a technical problem for verifying and processing call data without reliance on the billing system—through a network-side mechanism, which was not a business method, though it might be used in business.
The Court found that the claimed invention did not describe a method of conducting business. Instead, it described a method of deploying software within a network system to enable technical functions such as message verification and fraud detection. As per the Court, the inclusion of billing and usage terms did not, by itself, reduce the invention to a business method.
As a part of its analysis, the Court referred to earlier decisions where inventions implemented through software or using hardware, firmware, and network features were not held to be excluded merely because they touched upon commerce or transaction-related features. It reiterated that the focus must be on the substance of the claims, not the labels used.
While the Controller’s order briefly referenced the use of algorithms, the Court observed that there was no substantive analysis under the algorithm or computer program per se exclusions.
Final Decision
The Court allowed the appeal and set aside the rejection. The matter was remanded for reconsideration under the following terms:
- A different officer must conduct the review to avoid any bias.
- The scope of reconsideration must be confined to examining whether the claimed invention is excluded under Section 3(k) as a computer program per se or algorithm.
- A reasoned order must be issued within four months, after giving Tekelec an opportunity to be heard.
Citation: Tekelec, Inc. v. The Controller of Patents, (T)CMA(PT)/106/2023 (H.C. Madras Mar. 25, 2025). Available at: http://indiankanoon.org/doc/2326602/, Visited on: 10/06/2025.
