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Patentability of computer related inventions

22 January 2020

by Dipan Banerjee Dr. Gaurav Gupta

In the case of Ferid Allani v. Union of India and Ors., a single judge of the Delhi High Court vide its order dated 12 December 2019, directed the Indian Patent Office (IPO) to re-examine the petitioner’s Indian patent application in the light of observations of the court on patent eligibility of computer-related inventions (CRIs). The court further ordered the IPO to provide an opportunity of a hearing to the petitioner and decide the Indian patent application within two months from the date of the court’s order.

Facts of the Case

The petitioner, Ferid Allani, a citizen of Tunisia, filed the Indian National Phase patent application No. IN/PCT/2002/00705/DEL with the IPO on 17 July 2002. The Indian application included both method and device claims relating to “accessing information sources and services on the web”. The IPO, after examining the Indian patent application, issued a First Examination Report (FER) on 21 February 2005 where the method claims were objected for being directed to computer program per se under Section 3(k) of the Patents Act, 1970 and the device claims were objected for lacking novelty and inventive step over the prior arts cited in the FER. The petitioner responded to the FER along with claim amendments. An order was issued by the IPO on 21 September 2005, which stated that despite the claim amendments, the Indian patent application was claiming a subject matter excluded (or non-patentable) under Section 3(k).

Subsequently, a writ petition was filed by the petitioner before the Delhi High Court challenging the contentions raised in the order dated 21 September 2005. On 25 February 2008, a single judge of the Delhi High Court directed that the IPO shall give reasons for the rejection, and accordingly the matter was remanded back to the IPO. The petitioner was given four weeks’ time to respond against the IPO’s order. Further, the court also directed that the petitioner shall be given an oral hearing, in accordance with the provisions of the Patents Act before deciding the petitioner’s Indian patent application. Subsequently, upon hearing the petitioner, the IPO again rejected the Indian patent application vide a detailed order dated 18 November 2008 concluding that method claims 1 to 8 were directed to computer program per se and were thus excluded (or non-patentable) under Section 3(k) and device claims 9 to 14 lacked novelty and inventive step.

The petitioner appealed to the Intellectual Property Appellate Board (IPAB) against the IPO’s detailed order of 18 November 2008. The IPAB dismissed the appeal vide its order dated 25 March 2013 citing lack of technical effect and technical advance in the claimed invention and in effect confirming the IPO’s rejection. The present case is a writ petition challenging the IPAB order dated 25 March 2013.

Contentions of the Parties

The petitioner contented that the rejection of the Indian patent application was incorrect as the Indian patent application clearly discloses a technical effect and a technical advancement. To support this contention, the petitioner relied upon various parts of the patent specification, and various guidelines issued by the IPO in respect of examination of CRIs. The petitioner submitted that the claimed invention enables more efficient data base search strategies, more economical use of system memory or higher speed of accessing stored data, etc., which constitute “technical effect” and thus the claimed invention does not fall under Section 3(k) and shall be allowed.

The respondents argued that the High Court in its writ jurisdiction cannot re-consider technical arguments, where the IPAB, which is a technical tribunal, has already taken a view in the matter based on the technical arguments.

Decision of the Court

After hearing the arguments of the parties and relying upon Section 3(k) of the Patents Act, 1970, various guidelines issued by the IPO in respect of examination of CRIs [see endnote 1], legislative history of Section 3(k) including Report of the Joint Committee on the Patents (Second Amendment) Bill, 1991, and pari materia provisions from the European Union, such as Article 52 of the European Patent Convention, the court allowed the petition. The IPO was directed to re-examine the Indian patent application taking into account the observations of the court. Based on the re-examination, the IPO was directed to issue a decision on the Indian patent application within a period of two months from the day of the pronouncement of the present order, after granting a hearing to the petitioner.

The court observed and reiterated the previously established principles that patentability of CRIs shall be examined based on presence of “technical effect‟ and/or “technical contribution”. If the invention demonstrates a “technical effect‟ or a “technical contribution‟ it is patentable even though it is based on a computer program. The court pointed out that the effect which the computer programs produce is crucial in determining patentability. Further, the court opined that the term “technical effect‟ shall be interpreted according to judicial precedents, pari materia provisions, and practices of patent offices of foreign jurisdictions. While discussing the issue of patentability of CRIs, relying on the Report of the Joint Committee on the Patents (Second Amendment) Bill 1991, the court observed that the words ‘per se’ were incorporated in Section 3(k) so as to ensure that genuine inventions which are developed based on computer programs, are not refused patents.

Conclusion

Through the order, the Delhi High Court clearly sets out, and reconfirmed, that for examination of CRIs for patentability, the IPO shall enquire into the technical effect and/or technical contribution of the claimed invention. The order also indicates that for examination of CRIs, the IPO shall take into account all CRI-based guidelines issued by the IPO from time to time, legislative history of Section 3(k), pari materia provisions present in other jurisdictions, and the jurisprudence applied across foreign patent offices.

The order also seems to indicate that the same test of patentability, viz., “technical contribution/ technical effect”, may also be applied for CRIs in the field of artificial intelligence (AI) and blockchain technologies.

It appears that the present order reinforces the well-established jurisprudence with respect to CRIs, according to which any invention having a technical contribution or technical effect is not merely a computer program, although the invention is implemented using a computer program. This is similar to the findings of the Delhi High Court in the case of Telefonaktiebolaget LM Ericsson v. Intex Technologies (India) Limited [CS(OS) No.1045/ 2014].

[The first author was Principal Associate while the second author is a Joint Director in IPR practice in Lakshmikumaran & Sridharan in Bengaluru and New Delhi, respectively]

Endnotes:


  1. Draft Guidelines for Examination of Computer Related Inventions, 2013, Guidelines for Examination of Computer Related Inventions, 2016, and Revised Guidelines for Examination of Computer Related Inventions, 2017