Indian Patent Office Rejects Google’s Patent Application for Targeted Advertising

Why do applicants apply for patents on ineligible subject-matter in India when the statutory proscriptions are so much more clearly worded than, let’s say, in the US? 

I couldn’t help asking myself this question after reading a decision of the Mumbai Patent Office rejecting Google’s patent application for a "computer-implemented" method for targeted advertising.

In a hearing held on April 8, 2011 under Section 14 of the Patents Act, Google’s application 1083/MUMNP/2007 for a patent on “Associating Features With Entities, Such As Categories Or Web Page Documents, And/Or Weighting Such Features” was rejected under Section 15.

The principal claim as originally filed read thus:

1. A computer-implemented method comprising:

accepting, by a computer system including at least one computer, a keyword-to-category association;

generating, by the computer system, at least one result using the keyword-to-category association;

serving, by the computer system, the generated at least one result to a user;

tracking, by the computer system, user behavior with respect to the served at least one result updating, by the computer system, a score of  the keyword-to-category association using the tracked user behavior; and

storing, by the computer system, the updated score of the keyword-to-category association in association with the keyword-to-category association

This was amended to read as follows:

1. A computer-implemented method comprising:

accepting, by a computer system including at least one computer, a keyword-to-Category association;

generating, by the computer system, at least one result using the keyword-to-category association

serving, by the computer system, the generated at least one result to a user;

tracking, by the computer system, user behavior with respect to the served at least one result

updating, by the computer system, a score of the keyword-to-category association using the tracked user behavior; and

storing, by the computer system, the updated score of the keyword-to-category association in association with the keyword-to-category association.

In the decision, the Patent Office seems to have primarily objected on grounds that the claim does not disclose an inventive step...but my question is, does this claim even satisfy the requirement of Indian law as far as eligibility of subject-matter is concerned??

Does the principal claim, in its original or amended forms, qualify as a system claim merely because the words “computer system” are present?

Para 1 of the Complete specification reads as follows:

"The present invention concerns advertising. In particular, the present invention concerns improving targeted advertising."

How does this invention not fall within the excluded/unpatentable subject-matter as spelt out in Section 3(k) of the Act? Where is the technical problem for which a technical solution is disclosed in the claim?

A further reading of the decision informs us that Section 3(k) was cited as the second ground of objection...shouldn’t patent-eligibility figure on the top of the priority list in examining a patent application?

That said, to give due credit to the Patent Office, the patent application was ultimately rejected citing Section 3(k) of the Act.

I am not against grant of patents to computer-implemented inventions (CII), but as the law stands today, my humble opinion is that the “invention” disclosed in Google’s application cannot be treated as a CII.

I think India should consider introducing preliminary examination of patent applications at the stage of filing to filter applications like these so that quality time may be invested in examining other applications.