An appeal under section 117A of the Patents Act, 1970 was filed challenging the order dated 12^th June, 2020 passed by the Controller of Patents & Designs. Vide the said order, the Appellant’s (JITENDRA KOHLI) application No.3290/Del/2005 was rejected under Section 15 of the Act.

Appellant filed a patent application titled ‘Process for conducting electronic tendering on secured platform’. The First Examination Report (FER) was issued 10 years later on 29th January, 2016 in which the grant of patent was objected on the ground of lack of novelty, and non-patentability under Sections 3(k), and 3(m) of the Act. In response to the FER, the Appellant filed its reply on 28^th January 2017, and it was brought to the attention of the Controller that the claims have been amended to overcome the objections raised in the FER. Thereafter, hearing was conducted, and the impugned order was passed on 12^th June 2020.

The submission of the ld. counsel for the Appellant was that during the process of examination, the claims which were originally filed by the Appellant, were amended. The objection under Section 3(k) of the Act in respect of non-patentability, has been considered by the Controller, by taking the claims as originally filed which were in the form of “process claims”.

The Court held that the perusal of the impugned order shows that the ld. Assistant Controller has considered the unamended claim and has held that the same is a business method. The amended claims have not been taken into consideration by the Controller at the time of deciding the fate of Appellant’s application. This is clearly a glaring error.

Under these circumstances, the Hon’ble Court has set aside the impugned order. The matter has been remanded back to the patent office for reconsideration.