17 August 2020

Computer program – Invention must be examined as whole, considering technical effect achieved and its technical contribution

The IPAB has allowed the appeal in a case where the Controller had earlier refused to grant patent to a computer program observing that the objections as regards lacking novelty as well as falling under Section 3(k) of the Patents Act persisted. The invention taught delaying a hit to the web (internet) unless necessary parameters to construe the request were extracted from the user. The objective of the invention was to be able to get the desired information resource with a single “hit” to the web.

It may be noted that the Controller in its impugned order was re-examining the petitioner’s Indian patent application, on remand by the Delhi High Court where the High Court had held that invention demonstrating technical effect/contribution are patentable even if based on a computer program [Refer L&S IPR Amicus for January and February 2020 for the earlier decisions].

Relying on the Guidelines for grant of patents relating to the Computer Related Inventions, 2013, the Board observed that the invention fell under at least 3 indicators of technical effect - higher speed, more economical use of memory and a more efficient data base search strategy. It was also of the view that mere fact that a computer program was used for effectuating a part of the invention, does not provide a bar to patentability. It held that the invention must be examined as whole, considering technical effect achieved and its technical contribution.

Further, elucidating the key differences between the present invention and the document D1, the Board in its Order in the case Allani Ferid v. Assistant Controller of Patents & Designs observed that the Controller incorrectly identified D1 as the relevant prior art with respect to the present invention as both these inventions had different objectives and therefore provided different solutions.

It noted that D1 not allowed the user to access a remote resource / information (not already available with the user), but merely allowed for selection of data items available to the user on the local station having static data or as a “more recent” data on the central station, while the impugned invention allowed a user to access a remote resource / information, not currently available to the user by any means, but available on the web. It held that the Controller erred in stating that D1 was an advancement over the present invention and was limited to “structuring of query”.


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