In Robert Bosch Limited vs Deputy Controller of Patents and Designs [CMA(PT)/1/2024], the Madras High Court set aside the order passed by the Controller that refused patent application number 201944047460, entitled “Method of Preheating and Controlling the Temperature of Fuel injected into a Combustion Engine”. The refusal was based on the ground that the claimed invention was patent ineligible under Section 3(m) of the Patents Act, 1970, which excludes from patentability “a mere scheme or rule or method of performing mental act or method of playing game”.

It was reasoned in the impugned order that although the claimed invention was industrially applicable, it constituted a theoretical method and did not result in a tangible product, thereby attracting the bar under Section 3(m).

The Court observed that the Controller had rejected the subject application solely on the basis that it comprised a method claim which did not result in a product. The Court rejected this interpretation and clarified that method process claims, particularly those involving a series or sequence of steps, cannot be characterized as a mere method of performing a mental act. The Court emphasized that interpreting Section 3(m) to exclude all method claims would contradict the Patent Act’s recognition of process patents.

The Court held that the claimed invention involved a series or sequence of steps, and, therefore, did not fall within the scope of Section 3(m). However, noting that the objection of lack of inventive step had been raised in the hearing notice, the matter was remanded for re-consideration on that ground alone.