Full Judgment Text
* IN THE HIGH COURT OF DELHI AT NEW DELHI
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% Reserved on: 30 April 2024
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Pronounced on: 30 July 2024
+ C.A.(COMM.IPD-PAT) 26/2021
AB INITIO TECHNOLOGY LLC ..... Appellant
Through: Mr. Vineet Rohilla and Mr. Tanveer
Malhotra, Advocates.
versus
ASSISTANT CONTROLLER OF PATENTS AND DESIGNS
..... Respondent
Through: Mr. Harish Vaidyanathan Shankar,
CGSC alongwith Mr. Srish Kumar
Mishra, Mr. Alexander Mathai
Paikaday, Mr. Krishnan V. and Mr.
Lakshya Gunawat, Advocates.
+ C.A.(COMM.IPD-PAT) 447/2022
AB INITIO TECHNOLOGY LLC ..... Appellant
Through: Mr. Vineet Rohilla and Mr. Tanveer
Malhotra, Advocates.
versus
THE CONTROLLER OF PATENTS ..... Respondent
Through: Mr. Harish Vaidyanathan Shankar,
CGSC alongwith Mr. Srish Kumar
Mishra, Mr. Alexander Mathai
Paikaday, Mr. Krishnan V. and Mr.
Lakshya Gunawat, Advocates.
CORAM:
HON'BLE MR. JUSTICE ANISH DAYAL
JUDGMENT
ANISH DAYAL, J.
1. These appeals challenge rejection of patent application
Nos.6500/DELNP/2011 and No.6501/DELNP/2011 [‘ subject
applications ’] on the ground that subject matter is not patentable under
Section 3(k) of the Patents Act, 1970 [‘ the Act ’], since claims relate to
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computer program per se or algorithm. Patent application
No.6500/DELNP/2011 was also rejected on the ground of not being a valid
divisional application under Section 16 (1) of the Act.
Factual Background
2. Bibliographic details of these applications are tabulated as under:
C ASE A PPEAL N O . CA (PAT) 26/2021 CA (PAT) 447/2022
A PPLICATION N O . 6500/DELNP/2011
6501/DELNP/2011
ITLE
T “ A Method for
“ A Method for
Processing Data and a
Processing Data and a
System thereof ”
System thereof ”
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A PPLICATION D ATE 25 August 2011
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08 November 2011 08 November 2011
EQUEST FOR
R
XAMINATION
E
TH
P ARENT A PPLICATION 1167/DELNP/2006 GRANTED ON 27 A UGUST 2015
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FER ISSUED ON 23 March 2018 28 September 2018
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EPLY TO
R FER 20 September 2018 27 March 2019
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H EARING N OTICE 14 August 2020 08 June 2020
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D ATE OF HEARING 14 October 2020 24 June 2020
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23 July 2021 04 August 2020
MPUGNED RDER
I O
ATE
D
G ROUNDS FOR Sections 3(k) and 16, Section 3(k)
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EJECTION
R non-compliance of
formal objections
3. Both subject patent applications are divisional applications of Indian
Patent Application No. 1167/DELNP/2006 which proceeded to grant of
patent vide Indian Patent No.268384 [‘ parent application ’].
4. The appellant is a company incorporated in USA and filed the
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subject applications on 25 August 2011. The parent application is a
National Phase application No. PCT/US2004/030144 dated September 15
2004. Objection 2 of the First Examination Report [‘ FER ’] stated that
subject application was not patentable under Section 3(k) of the Act, since
method Claims 1-17 related to a set of sequences used to implement an
algorithm, Claims 18-19 are software products having computer
executable instructions, and Claims 20-21 do not disclose any
constructional of structural features but represent an algorithm. Objection
6 of the FER stated that the subject application does not stand as divisional
application under Section 16(1) and 16(3) of the Act, as there is no distinct
invention compared to granted claims of the parent application.
5. In the response to the FER, claims of the subject patent applications
were substantially amended to overcome the objections, and Claims 1-23
were filed along with the response. In the hearing notice, respondent
maintained the objections inter alia under Section 3(k) and, for the former
application, Sections 3(k) and 16 of the Act.
6. During the hearing, appellant raised objections especially with
regard to non-patentability under Section 3(k) and non-compliance with
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Section 16(1) of the Act. Detailed written submissions were filed on 29
October 2020, along with amended claims and other documents.
7. Subject matter of the patent application would be evident from
Claim 1 of the said application extracted as under:
Submissions on behalf of appellant
8. Appellant’s contention was that subject application was a data
processing method which involved the following essential elements:
a. An identification processing module – which created a
plurality of subsets of fields of data records from a data source,
with each subset including at least a first field and a second field;
b. A partition component – which partitions data records into
multiple parts independent of values occurring in the fields of those
data records;
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c. An attach value component –forming data elements from the
records for each of the multiple parts, with each data element
identifying the first field and the second field of the given subset
and corresponding values occurring in those fields;
d. A rollup component – used to determine counts based on the
values that occurred in the first field and values that occurred in the
second field of the database for each of the part combining at least
some of the counts of data elements of different parts to generate
accumulated counts;
e. A global rollup component – for identifying a distribution of
values most frequently occurring in the second field of a plurality
of records based on the accumulated counts;
f. A functional relationship processing module – which would
identify one or more of the plurality of subsets of fields as having a
functional relationship based on a selected distribution of values;
g. A presentation component – used to present the identified
functional relationship to a user.
9. This, appellant claims would eventually result in a ‘ technical effect ’
and therefore, cannot suffer on grounds of non-patentability under Section
3(k) of the Act. Attention was drawn in this regard to decision in Ferid
Allani vs. Union of India and Ors. , 2019:DHC:6944, where this Court
held that patent application in field of computer programs would have to
be assessed for ‘ technical contribution ’, having ‘ technical effect ’ and
‘ technical advancement ’ that would make such programs patentable.
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10. This was relied upon inter alia by a Coordinate Bench of this Court
in Microsoft Technology Licensing, LLC v. Asstt. Controller of Patents
ETHODS
& Designs, 2023:DHC:3342 where a patent application for “M
ND YSTEMS OR UTHENTICATION F SER OR UB OCATIONS F
A S F A O A U F S -L O
ETWORK OCATION
A N L ” by Microsoft was first refused under Section 3(k)
by the Patent Office, but set aside in appeal, by this Court. It was held that
‘ technical effect ’ is achieved by improved security of authentication
process for accessing sub-location of a network location, and that the
invention provided a technical solution to security risks associated with
using cookies to authenticate users for sub-locations within a network
location.
11. Relying on these decisions, counsel for the appellant submitted that
the method claimed in the subject application, essentially involved
communication between different hardware elements, such as a computer
processor, and enabled associated hardware of a computer, engaged in data
profiling, to increase the speed of functional dependency analysis and
hence, net effect in saving computer resources. It was asserted that the
subject invention was not theoretical in nature, nor was an abstract
formula, but required multiple steps, each of which was fundamentally
technical in nature and involved identifying, partitioning, determining,
combining and presenting data from stored data sets and doing so in a
manner that causes a machine to carry out rapid and efficient performance
of functional dependency analysis which otherwise was time consuming
and required extensive computational resource. A technical effect of
subject invention, therefore, went beyond the “normal interaction of
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software with a general-purpose computer” , as stated in the impugned
order.
12. Appellant’s counsel submitted that various examples were given in
specifications regarding aspects of invention and its various
advantages. Aspects of the invention can be useful in profiling data sets
with which the user is not familiar. The information that is automatically
determined, or which is determined in cooperation with the user, can be
used to populate metadata for the data sources, which can then be used for
further processing.
13. It is asserted by appellant’s counsel that the techniques described
and claimed in the subject application therefore provide two ‘ technical
effects ’: (1) increasing the speed of functional-dependency analysis; and
(2) concurrently saving computer resources.
Submissions on behalf of respondent/Patent Office
14. Mr. Harish Vaidyanathan Shankar, Central Government Standing
Counsel [‘ CGSC ’], refuted the contentions of the appellant and essentially
stated that this was a data processing method and would achieve data
profiling at best. He submitted that various components like partition
component, attach value component, rollup component, global rollup
component and presentation component are software instruction modules
to perform the steps mentioned in the process claims.
15. Thus, he submitted the invention was merely a process/software for
processing data by first partitioning data into multiple parts i.e.
randomly/logically selecting data records of any two data field of the
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database or dataset, counting the occurrence of each of the data values in
each field, determining statistics of co-occurrence of data values in the
second field, and common in the first field, driving possible functional
dependency between the two data fields and creating and storing in a
metadata store, the profile information or data profile created. This profile
information includes statistics or summary data computed through
counting a number of occurrences for each set of distinct values for a field.
16. This profiling is performed using profiling module i.e. a set of
instructions which reads records from a data source, computes statistics
and other descriptive information that reflect the contents of the data set,
writes those statistics and descriptive information in the form of a ‘ profile ’
into the metadata store, which can then be examined through the user
interface or any other module with access to the metadata store. The
statistics in the profile preferably include a histogram of values in each
field, maximum, minimum and mean values, and samples of the least
common and most common values.
17. It was submitted that the present application represents a method to
perform data profiling or summary of data i.e. metadata stored in the
metadata store. The end result of the method employed is the profiled data
i.e. metadata. The data or database itself is not patentable and is a subject
matter for copyright.
18. The present invention performs data processing or data profiling
based on determining co-occurrences statistics. This kind of data profiling
or co-occurrence statistics is performed by analyzing data records in
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various data fields of the database or data file. This is evident from the
following part of the Specifications, extracted as under:
" Quantities characterizing a relationship between
fields can provide an indication of which fields
may be related by different types of relationships.
The user may then be able to examine the data
more closely to determine whether the fields truly
form that type of relationship "
19. The task performed by the claimed method or software is, therefore,
a non-technical process. It is in the nature of sorting or arranging data
based on certain common fields. For achieving the said purpose, the
software makes the identification and does the sorting. Such sorting does
not on its own establish presence of a ‘ technical effect ’.
20. Essentially, the CGSC claimed that the whole process did not affect
the internal functioning of a computer, but merely analyzes data and stores
summary of data in form of metadata, and only represents a set of
computer executable instructions for a general-purpose computer, and an
algorithm to execute the said instructions in a sequential manner. The said
programs did not have any technical effect since they were merely
methods.
21. Relying on European Patent Office Guidelines [‘ EP Guidelines ’],
he submitted that in this patent application, the claimed invention neither
claims any optimization in structured query execution nor improving
system throughout, rather the claimed process analyzes the data and
profiling module, generates summary of the data based on the occurrences
or co-occurrences of data values in the data fields. This summary of data or
data profiling is cognitive data or cognitive information relevant to human
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users and does not contribute to producing a technical effect. Hence, EP
guidelines also exclude such subject matter from patentability ( “....
conversely, data structures defined solely by the cognitive information they
store are not considered to contribute to the technical character of the
invention beyond the mere storage of data . ..” ). Therefore, the claimed
subject matter does not show any ‘ technical character ’ or ‘ technical
effect ’.
22. He further stated that the decision in Microsoft ( supra ) was
distinguishable, in that the claim itself provided a system for authentication
of a user for sub-locations of a network location and had a defined
intended technical effect which was recognized by the Court. The Court
had held that it provided a technique for authentication of a user for
accessing one or more sub-locations of a network location involving the
use of two different cookies and to prevent unauthorized access and
effectively defusing attempts of malicious users to gain access to the
network. This, the CGSC contended, was quite different from what the
appellant was seeking to canvass, as an intended ‘ technical effect ’ of the
subject application.
Evolution of Section 3(k) of the Patents Act
23. Since the discussion focuses on the scope, width, and ambit of
Section 3(k) of the Act, it would be instructive to give a brief overview of
the legislative evolution, the opinion of commentators, and Courts.
L EGISLATIVE H ISTORY OF S ECTION 3( K )
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24. The legislative aspect has been usefully elaborated in a decision by a
Coordinate Bench of this Court in Microsoft Technology ( supra ). No
purpose would be served in reinventing the wheel and repeating the same.
However, for purposes of ease of reference, the significant milestones in
the evolution of Section 3(k) of the Act are summarized as under:
(i) Constitution of the Committee under Justice Bakshi Tek Chand in
1948 for review of patent laws in India – Recommendations were
submitted in April 1950, basis which the Bill No.59 of 1953 was presented
in Parliament. This introduced provisions prohibiting certain categories of
inventions from patentability. However, since the Government did not
press for this Bill, it lapsed.
(ii) Constitution of the Committee under Justice N. Rajagopala
Ayyangar, Retd. Judge of the Supreme Court of India, in April 1957 to
review patent laws in India. The report [‘ Ayyangar Committee Report ’]
was submitted in September 1959 emphasizing inter alia on “ what
inventions should be not patentable ” .
(iii) Bill No. 62 of 1965 introduced in Parliament based on the Ayyangar
Committee Report added Section 3 under Chapter II titled “ Inventions Not
Patentable ”, however, did not include any mention of computer program
or algorithm. This Bill eventually lapsed.
(iv) Bill No. 120 of 1967 was introduced in Parliament reproducing
provisions of Section 3 from the 1965 Bill, and enacted finally as the
Patents Act, 1970. There was no mention of computer program or
algorithm under Section 3.
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(v) The Agreement on Trade Related Aspects of Intellectual Property
st
Rights [‘ TRIPS Agreement ’] entered into force on 01 January 1995 by
member nations of the World Trade Organization [‘ WTO ’] for minimum
standards for regulation of different forms of intellectual property by
national governments. Article 27 provided exclusions to patentability.
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(vi) Patents (2 Amendment) Bill No.49 of 1999 introduced in
Parliament with a new entry relating to computer programs inserted as
Section 3(k) that read as follows: ‘ a mathematical or business method or a
computer program or algorithm ’. It did not mention the term ‘ per se ’.
(vii) Joint Parliamentary Committee constituted to consider this Bill of
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1999, tabled a report on 19 December, 2001 and recommended insertion
of the word ‘ per se ’ along with ‘ computer program ’. In an attempt to
clarify this insertion, the JPC stated inter alia that ‘ the intention here is not
to reject them for grant of patent if they are inventions. However,
computer programs as such are not intended to be granted patent ’.
(viii) The 1999 Bill was finally passed in 2002 and came into force as the
Patents (Amendment) Act, 2002 containing Section 3(k) which read as
under – ‘ a mathematical or business method or computer program per se
or algorithms ’.
(ix) Patents (Amendment) Ordinance, 2004 was promulgated with effect
st
from 01 January 2005 with a further clarificatory amendment in Section
3(k) separating computer programs from mathematical methods/business
methods/algorithms and excluding from the exception of computer
programs ‘ a technical application to industry or a combination in
hardware ’. This Ordinance was not ratified by Parliament.
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(x) Post the Ordinance, some other Parliamentary developments
occurred and deliberations in that regard are summarized usefully in this
paragraph from Microsoft Technology ( supra ):
“27. Although the changes introduced by the
Patents (Amendment) Ordinance, 2004 were not
ratified by the Parliament, however, the
Parliament passed Statement of Objects and
Reasons to the Patents (Amendment) Act, 2005
[“2005 Statement of Objects and Reasons”],
which endorsed the “technical contribution”
approach for patentability of computer-related
inventions [“CRIs”]. The 2005 Statement of
Objects and Reasons states one of the objects as:
“(iii) to modify and clarify the provisions relating
to patenting of software related inventions when
they have technical application to industry or in
combination with hardware;”
28. The Rajya Sabha’s Department Related
Parliamentary Standing Committee on Commerce
highlighted the need for a clear definition to “per
se” under Section 3(k).17 Later, they also
emphasized upon revisiting the Patents Act, 1970
and Copyright Act, 1957 to facilitate twelve (12)
inventorship, authorship and ownership by
Artificial Intelligence [“AI”].18 Relevant
portions of the “One Hundred and Sixty First
Report on Review of the Intellectual Property
Rights Regime in India”, is reproduced
hereinbelow:
“ARTIFICIAL INTELLIGENCE AND IPR
xx .. xx .. xx
8.6 The Committee was informed that a
framework needs to be developed for patenting of
algorithms by associating their use to a tangible
result. For example, under the AI guidelines of
European Patent Office, abstract mathematical
methods cannot be patented. However, it is
patented if the mathematical method involves the
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use of technical means or a device such as
computers. Also, linking the mathematical
applications and algorithms to practical
application makes them a process which could be
patented as being practiced in US.
8.7 The Committee recommends the Department
that the approach in linking the mathematical
methods or algorithms to a tangible technical
device or a practical application should be
adopted in India for facilitating their patents as
being done in E.U. and U.S. Hence, the
conversion of mathematical methods and
algorithms to a process in this way would make it
easier to protect them as patents.”
25. After noting the legislative history, this Court in Microsoft
Technology ( supra ) opined as under:
“29. The aforenoted legislative history of the
provision, Statement of Objects and Reasons to
the Patents (Amendment) Act, 2005, the Report of
Joint Parliamentary Committee on Patents
(Second Amendment) Bill, 1999, the
parliamentary debates, et al. point towards the
shift in relation to grant of patent protection for
CRIs. The legislative discussions also emphasize
the need for adopting a clear definition to the
term “per se” to ensure accurate and consistent
application of the law. The said term was added
to make it clear that “computer programs as
such” are non-patentable. The intent of the
amendment was to allow grant of patents to CRIs
that involve a novel hardware component or
provide a technical contribution to the prior
art(s) beyond the program itself. In other words,
if a computer program is used in conjunction with
a hardware or results in a technical effect/ solves
a technical problem, it may be eligible for patent
protection. This amendment brings Indian patent
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jurisprudence in line with international
practices.”
(emphasis added)
26. The Court further noted the guidelines issued by the Patent Office
for examination of Computer Related Inventions [‘ CRIs ’] and observed as
under:
“ Guidelines issued by the Patent Office for
examination of CRIs
31. In 2013, the Office of Controller General of
Patents, Designs and Trade Marks
[“CGPDTM”] introduced its first guidelines for
examining patent applications of CRIs. Two
terms were defined: technical effect and technical
advancement. These terms are used to assess
patent eligibility of a claimed invention in
relation to Section 3(k) of the Act. 19 The said
guidelines provided seventeen (17) illustrations
of CRIs and interprets all of them to be
nonpatentable. The necessity of a novel hardware
and other features of the said guidelines led to its
revision in 2015, wherein a constructive
approach towards patentability of CRIs, were
introduced. Eleven (11) illustrations were
provided, of which, nine (09) were considered
patentable and two (02) nonpatentable. Shortly
after being released, the same were suspended
and subsequently, 2016 CRI guidelines were
introduced. These guidelines reflected a return to
the 2013 CRI guidelines with a more rigid
interpretation of Section 3(k) and were criticized
for their lack of clarity and consistency in the
examination of CRIs, leading to ambiguity in the
industry and also for broadening the exclusions
under Section 3(k) of the Act. In response to these
concerns, 2017 CRI guidelines were issued which
aimed to provide greater clarity and consistency
in the examination process of CRIs. Indeed, the
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said guidelines had a positive tenor and are more
progressive regarding patentability and
examination procedure of patent applications of
CRIs under Section 3(k) of the Act. The revised
2017 CRI guidelines have done away with the
three-step test laid down in the 2016 CRI
guidelines and requirement of a novel hardware
in conjunction with a computer program
(software) when a method claims qua a new
computer program in combination with the
hardware are being claimed. The focus in the
2017 CRI guidelines appears to be on substance
over forms and claims .”
(emphasis added)
27. In Ferid Allani ( supra ), these guidelines were also discussed. The
Court held that in consonance with the inclusion of the term ‘ per se’ ,
inventions based on computer programs should not be refused patent and
the Court has to assess the aspect of ‘ technical effect ’ and ‘ technical
advancement ’ for determining patentability of CRIs.
28. Clause 3.15 of the CRI Guidelines, 2013 provided examples of
technical effect; same is being reproduced herein for ease of reference:
“ 3.15 Technical Effect:
It is defined for the purpose of these guidelines as
solution to a technical problem, which the
invention taken as a whole, tends to overcome. A
few general examples of technical effect are as
follows:
• Higher speed
• Reduced hard-disk access time
• More economical use of memory
• More efficient data base search strategy
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• More effective data compression
techniques
• Improved user interface
• Better control of robotic arm
• Improved reception/transmission of a radio
signal. ”
29. Later, the definitions of ‘ technical effect ’ in Clause 3.15 and
‘ technical advancement ’ in Clause 3.16 were replaced by a more generic
phraseology in the 2016 CRI Guidelines per Clauses 4.4.4 and 4.4.5. This
was further amended in 2017 CRI Guidelines where it was categorically
stated in Clause 4.4.4 that “ in patentability cases, the focus should be on
the underlying substance of the invention, not the particular form in which
it is claimed ”.
30. In this context, reference may also be made to a Commentary on
Patent Law by Justice Prathiba M. Singh ( 2024, Thompson Reuters )
wherein a useful analysis of Section 3(k) is provided in para 5-238 to 5-
265. The opinion seems to lean towards a restrictive interpretation of
Clause 3(k), rather than an expansive one so as to not prevent concepts
which have specific application in fields of technology being excluded
from patentability. The author states in para 5-242 as under: “ most
innovations being carried out in India by small entrepreneurs, start-ups or
the bigger IT solution companies are in the area of business methods,
computer programs and algorithms. Not protecting them results and not
recognizing the strength of such innovations ”. Further, in para 5-244, the
author states that if the algorithms which are step-wise description are
converted into a code resulting in a technical application, the algorithm
transforms and becomes a technical advancement, and, therefore,
patentable as they are producing a technical effect.
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31. Relevant decisions which have traversed the nuances of Section 3(k)
of the Act are as under:
(i) Ferid Allani vs. Union of India and Ors. , 2019:DHC:6944 –
the matter concerned rejection of a patent application for
ETHOD AND EVICE FOR CCESSING NFORMATION
“M D A I
S OURCES AND S ERVICES ON THE W EB ”. The rejection of
patent application was first set aside by a Single Judge of this
Court and by a direction in February 2008, the Patent Officer
was directed to give reasons for the rejection. In November
2008, Patent Office again rejected the patent application and
gave reasons under Section 3(k). The order of Patent Office
was appealed and in para 10 of the said decision, it was
observed by this Court as under:
10. Moreover, Section 3(k) has a long legislative
history and various judicial decisions have also
interpreted this provision. The bar on patenting is
in respect of ‘computer programs per se….’ and
not all inventions based on computer programs.
In today's digital world, when most inventions are
based on computer programs, it would be
retrograde to argue that all such inventions
would not be patentable. Innovation in the field of
artificial intelligence, blockchain technologies
and other digital products would be based on
computer programs, however the same would not
become nonpatentable inventions - simply for that
reason. It is rare to see a product which is not
based on a computer program. Whether they are
cars and other automobiles, microwave ovens,
washing machines, refrigerators, they all have
some sort of computer programs in-built in them.
Thus, the effect that such programs produce
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including in digital and electronic products is
crucial in determining the test of patentability.
(emphasis added)
The Court then remanded the matter for re-examination by the
Patent Office in light of the Guidelines issued for CRIs.
(ii) Lava International Ltd. v. Telefonaktiebolaget LM Ericsson
2024:DHC:2698 – in assessing one of the contentions of Lava
for revocation of the patent under Section 3(k), a Single Judge
of this Court opined as under:
“ 69. After analysing the CRI Guidelines and the
aforementioned judgments, I am of the view that
the inventions that are solely directed towards
algorithms, mathematical methods, business
methods or are computer programmes per se,
would not satisfy the test of patentability and
would consequently, not be inventions. However,
an invention that merely incorporates algorithms,
sets of instructions, mathematical or business
methods within a method or system, and satisfies
all the criteria for patentability, is not inherently
non-patentable. Therefore, what has to be seen is
that if the algorithms are directed at enhancing
the functionality of a system or a hardware
component, the effect or the functionality derived
by the system or the hardware component is a
patentable subject matter However, the algorithm
itself is not a patentable subject matter. To
illustrate, we may consider the example of a
smart thermostat algorithm that dynamically
adjusts the heating or cooling of a room in a
building based on real-time weather data,
occupancy patterns and energy prices. This
algorithm, by itself, is a series of computational
steps and may not be patentable. However, the
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implementation of this algorithm within a device,
even if the said device is a general-purpose
computer, in such a way that it transforms the
computer’s capabilities and leads to tangible
benefits like reduced energy consumption, cost
savings and improved comfort levels for
occupants can be considered as a patentable
subject matter.
70. It is clear that an invention should not be
deemed a ‘computer programme per se’ merely
because it incorporates algorithms and computer
executable instructions. In fact, the patentability
should be assessed based on its practical
application in solving technical problems and the
technical advancements it offers. Furthermore, if
the subject matter is implemented on a general-
purpose computer, but results in a further
technical effect that improves the computer
system’s functionality and effectiveness, the
claimed invention cannot be rejected as non-
patentable for being a ‘computer programme per
se’. This aligns with the intent behind the
qualifier ‘per se’, introduced by the legislature in
the Patent (Amendment) Act of 2002 for computer
programmes. Further, the said approach also
aligns with the legislative intent behind the
patentability of software related inventions,
which is evident from the press release issued by
the Press Information Bureau dated 27th
December, 2004 titled – ‘Kamal Nath's statement
on the Ordinance relating to Patents (Third)
Amendment. ”
(emphasis added)
(iii) Microsoft Technology Licensing, LLC v. Asstt. Controller of
Patents & Designs, 2023:DHC:3342 – in assessing an appeal
against the rejection of a patent application for “M ETHODS
AND S YSTEMS FOR A UTHENTICATION OF A U SER FOR S UB -
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L OCATIONS OF A N ETWORK L OCATION ”, a Single Judge of this
Court held as under:
“ 40. The subject patent provides a technique for
authenticating a user for accessing one or more
sub-locations of a network location, involving the
use of two different cookies. One cookie is used
for authentication at the network location, and
another at the sub-location. The claimed
invention’s technical effect/ contribution is to
prevent unauthorized access to sub-locations
within the network location by using two different
cookies and effectively foiling the attempts of a
malicious user to gain access to network sub-
locations by illegally obtaining cookies from
another user. The technical effect is the improved
security of the authentication process for
accessing sub-locations of a network location.
Prior to this invention, using only one cookie to
authenticate a user for both the network location
and sub-locations posed a security risk, as
malicious users could steal cookies from others
and gain unauthorized access. By using two
different cookies/ two-tier authentication – one
for the network location and another for the sub-
location – the subject patent provides a more
secure authentication process that is not
vulnerable to cookie theft. The technical
contribution of this invention is the technique of
using two different cookies for providing
authenticated access to a client computer
accessing a sub-location(s) within a network
location, which simplifies user interaction with
content received from feeds. Overall, the subject
patent enhances the security of accessing sub-
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locations of network locations and streamlines
the user experience.
41. During the hearing, the Patent Office
defended its decision by arguing that the
invention is at the user-interface level and, hence
non-patentable. This understanding, absent in the
impugned order, also cannot be sustained. This is
because the subject patent’s technical effect and
contribution goes beyond the user-interface level.
The invention provides a technical solution to the
security risk associated with using cookies to
authenticate users for sublocations within a
network location. The use of two different cookies
for providing authenticated access to a client
computer accessing sub-location(s) in a network
location ensures that even if both cookies are
stolen by a malicious user, the malicious user
cannot gain unhindered access to other
sublocations within the network location. This
technical solution goes beyond the user-interface
level and provides a technical effect and
contribution, that is patentable. The technical
aspects of the invention, such as the use of
cookies and two-factor authentication, are
fundamental to the functioning of computer
networks and are not limited to the user-
interface. These aspects are vital for
safeguarding access to network locations and
their corresponding sublocations, representing a
critical concern for both businesses and
individuals. Additionally, the use of multiple
cookies for authentication is a technical solution
that goes beyond mere user interface design and
involves complex network-level communication
protocols. The technical aspects of the invention
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are closer to the heart of computer and network
technology, rather than user-interface.
Furthermore, the fact that the invention improves
the user experience does not necessarily mean
that it is limited to the user-interface. User
experience is undoubtedly an important aspect of
any technology, and improvements in this area
result from technical advancements at various
levels in the computer architecture. The subject
patent significantly enhances user experience;
however, this improvement is a result of the
technical solution it provides at a deeper level
within the network. This solution enables more
secure and efficient and streamlined access to
network locations and sub-locations,
demonstrating the impact of the underlying
technical advancements. Therefore, it would be
incorrect to exclude the claimed invention on the
basis that it is limited to user-interface. The
technical aspects discussed above are
fundamental to the functioning of computer
networks and provide a significant technical
contribution to the field. ”
(emphasis added)
(iv) In a recent decision by a Single Judge of this Court in
Microsoft Technology Licensing, LLC v. Assistant
Controller of Patents and Designs , 2024:DHC:3547, the
aspect of Section 3(k) of the Act was considered again in
context of an appeal against refusal of grant of patent
EVERSIBLE IMENSIONAL RE OST
application titled “R 2-D P -/P -
ILTERING FOR APPED IORTHOGONAL RANSFORM
F L B T ”. After
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citing Lava International Limited ( supra ) with approval, the
Court in Microsoft Technology ( supra ) (2024) held as under:
“ 33. In light of the above discussion, it is clearly
established that in case of an invention involving
computer programmes, to circumvent the
limitations imposed by Section (k) of the Act, a
patentee must demonstrate that the overall
method and system disclosed in the patent
application, upon implementation in a general-
purpose computer, must contribute directly to a
specific and credible technical effect or
enhancement beyond mere general computing
processes. Therefore, the inventive contribution
of a patent should not only improve the
functionality of the system but also achieve an
innovative technical advantage that is clearly
defined and distinct from ordinary operations
expected of such systems. ”
(emphasis added)
32. Counsel for appellant relied on extracts from Guidelines for
Examination of the European Patent Office. Para 3.6 of the said
Guidelines provided for computer programs being excluded from
patentability under Article 52(2)(c) and 52(3) if claimed “ as such” ,
excluding those where there was a ‘ technical character ’. Attention in
particular was drawn to para 3.6.4 which related to database management
systems and information retrieval. The said Guidelines stated inter alia as
under:
“ 3.6.4 Database management systems and
information retrieval
Database management systems are technical
systems implemented on computers to perform the
technical tasks of storing and retrieving data
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using various data structures for efficient
management of data. A method performed in a
database management system is thus a method
which uses technical means and is therefore not
excluded from patentability under Art. 52(2) and
Art. 52(3). ”
(emphasis added)
33. Reliance was also placed on a decision of the Technical Board of
th
Appeal of the European Patent Office dated 17 October 2019 in
Microsoft Technology Licensing LLC in Case No. T 0697/17 – 3.5.07.
The appeal was from a decision of the Examination Division refusing the
subject European Patent Application. The objection was taken for lack of
inventive step on the basis of general-purpose computer features. The
Appeal Board opined as under:
“ 5.3.1 It is clear from the very language of claim
1 that the method steps are performed by
components of a relational database system,
namely a parser, a query optimiser and a query
execution engine.
A database management system uses data
structures, software components and processing
techniques for storing, controlling and processing
data, and for providing an interface to let the
user create, read, update and delete data. The
internal data structures, such as an index and a
query tree, and components, e.g. a parser, a
query optimiser and a query execution engine,
are used purposively for storing data to a
computer storage medium and retrieving data
from the medium. As explained above, the
established case law considers these to be
technical effects (G 3/08, reasons 10.8.5; T
1569/05 of 26 June 2008, reasons 3.6). The data
structures used for providing access to data and
for optimising and processing queries are
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functional data structures since they purposively
control the operation of the database
management system and of the computer system
to perform those technical tasks. While a
database system is used to store nontechnical
information and database design usually involves
information-modelling aspects which do not
contribute to solving a technical problem, the
implementation of a database management
system involves technical considerations.
Therefore, a database management system is not
a computer program as such but rather a
technical system (see also decision T 1924/17,
reasons 9, 13 and 14). ”
(emphasis added)
34. Further reliance was placed on a decision of the Technical Board of
th
Appeal of the European Patent Office dated 09 May 2018 in the appeal
filed by SAP SE in Case No. T 2330/13 – 3.5.07. Appeal was against
refusal of a European Patent Application for claims on the basis that they
only provided a solution of the mathematical problem of checking rules
and was not inventive. In the decision, the Board opined as under:
“ 5.7.10 Regarding the present case, the Board
recognises that performing the method in parallel
usually results in more efficient evaluation of the
selection conditions. The "desired number of bit
sub-matrices" can be tuned, within the
constraints of a particular data set, so that the
desired degree of parallelism is achieved. Unlike
the case of T 1784/06 (supra), both the present
claims and the originally filed description (see
page 14, lines 10 to 12) describe parallel
processing.
The Board therefore considers that, as in decision
T 1321/11 (supra), the features supporting
parallel processing contribute to the technical
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character of the claim. In the present case, a
more concrete parallel hardware architecture
does not have to be claimed, since it is credible
that efficiency gains can be achieved for different
technical means used to perform the sub-tasks in
parallel.
5.8 In summary, even though the task performed
by claim 1 is of a non-technical nature (see point
5.6 above), the specific claimed bit (sub-
)matrices, bit strings and steps of the method,
especially those of splitting the bit matrix,
forming bit strings representing the selection and
restriction conditions and determining
inconsistent pairs of selection conditions when
performed by parallel processing, do contribute
to the technical character of the invention and
should be taken into account when assessing
inventive step. Similar conclusions apply to the
other claims of the main request. ”
(emphasis added)
Analysis of this Court
Objection under Section 3(k) of the Act
35. In light of the above decisions, submissions of the appellant
regarding the patent application requires closer scrutiny. As stated in the
2017 CRI Guidelines, it is not the form but the underlying substance which
has to be considered for the purposes of analyzing Section 3(k) of the Act.
Section 3(k), as noted above, excludes a computer program per se or
algorithm from patentability. The test which must be applied for
determining whether the claim is of a computer program per se / algorithm
or otherwise is based on determination of whether the said
program/algorithm has a technical effect. Some examples of technical
effect were given in the 2013 CRI Guidelines ( supra ) which included
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higher speed, reduced hard-disks access time, more economical use of
memory, more efficient database search strategy, more effective data
compression techniques, improved user interface etc . Even though, these
examples were not included in the 2016 CRI Guidelines, they gave a
useful indication of what, practically, would come within the radar for
determining ‘ technical effect ’.
36. Axiomatically, any method or process through an
algorithm/computer software is meant to solve a problem. The problem
may be relatable to a human user which needs computer software to
achieve a more efficient conclusion, or it may be relatable to processing
systems which apply the methods and achieve faster computation. This
distinction understandably can be quite blurred and, therefore, no distinct
definition or detailing can be provided which encompasses all possible
cases. However, the trend of the Courts, as evident from the decisions
cited above in paragraph 31 is to give a restrictive interpretation to the
exclusion in Section 3(k) of the Act, and adopt a more benevolent
interpretation to what would amount to ‘ technical effect ’. This approach
aligns itself with the fast progress of technology, which always evolves
incrementally by solving technical/processual problems in order to achieve
greater efficiency and better user interface.
37. To put it simply, any hardware [ which is essentially semi-conductor
chips and associated circuitry ] has to necessarily work in tandem with a
functional code [ which is in a programmable language, converted
ultimately into machine language i.e. binary system (bits), understood by
the hardware ]. Any processing input is given through a code/program
which the hardware processes, providing an output. If Section 3(k) of the
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Act is interpreted to mean that anything which is designed merely as an
input [ code/software ] is not patentable, it would be stating the obvious i.e.
input and output elements are in distinct silos from pure hardware i.e.
semi-conductor chips and circuitry. However, this is not how the Courts
have interpreted the inclusion of ‘ per se ’ in this provision.
38. ‘ Technical effect ’ is the bridge or the connect between an input and
the processor. If an ingenious input system/method is able to allow the
processor to give a more efficient and faster output and computation, the
effect, in this Court’s opinion, would be ‘ technical ’. A ‘ technical effect ’
cannot be just about nuts and bolts, or hardware tweaks and
transformations. If an innovative input [ in form of a program ] allows the
hardware to process the output faster, then it would amount to a ‘ technical
effect ’. In other words, a well-designed innovative input in the form of a
process, system, or method which enhances the computational ability of
the processor would undoubtedly result in a ‘ technical effect ’ and which
goes beyond the usual ‘ user interface ’. This already finds resonance in the
Lava International ( supra ) and the 2023 Microsoft Technology ( supra ).
39. Using this prism, let us focus on what appellant’s counsel has
submitted in favour of technical effect. Firstly , it is claimed that the
invention increases the speed of functional dependency analysis; secondly ,
it saves computer resources or amount of computation; thirdly , it allows
data profiling without maintaining a copy of data outside the data source,
thereby creating a more efficient storage system; fourthly , that profiling of
data can be performed parallelly by partition, thereby more efficient
processing; fifthly , the implementation of the invention is a special
purpose probable computer for processing data.
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40. The first two aspects find reflection in the following parts of the
Complete Specifications, which are extracted as under:
…
…
41. As regards the third aspect of ability to profile data without
maintaining a copy, reference is found in the following parts of the
Specifications, extracted as under:
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…
42. As regards the fourth aspect, its reflection is found in following
parts of Specifications, extracted as under:
…
43. As regards the fifth aspect, reference is made to Claim 23 of
6500/DELNP/2011 and Claim 26 of 6501/DELNP/2011 which indicate
that the system claimed is a product which may not be specific to a
particular industry but is a special purpose programmable computer for
processing data. The said Claims are extracted as under:
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…
44. The appellant, therefore, rightly claims that the invention has
necessary structural features which include a processor, a data source, an
input device, an output device and processing modules, as well as an
interface. The method, therefore, in conjunction with a special purpose
computer, allows for a technical effect of faster computation, parallel
processing, efficient storage, and ability to assess functional dependency
analysis.
45. The claimed invention has intended technical use and technical
applications and advantages, and the claim has been designed not to limit
the same by specifying one particular use. In this regard, relevant portion
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of the Specifications relied upon by appellant’s counsel is extracted as
under:
…
46. Respondent’s counsel submitted that what has been claimed was
cognitive data processing with no technical character. The mention of
special purpose or specially configured processors also finds reflection in
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the subject patent applications, particularly in the following portions of the
Specifications [ Claims 23 and 26 being the system claims in the respective
subject applications, already extracted above in para 43 ]; extracted as
under:
…
47. The technical effect, therefore, is claimed at the system level
between different processors and modules to increase the speed of
functional dependency and workload distribution by parallel processing.
This, the appellant has rightly claimed, is beyond the “ normal interactions
between the program and the hardware (client/server computer) ” – the
reason provided in the impugned order. This is different from cognitive
data profiling which is only meant to organize aspects of data for a human
interface without any impact in computation or processing. Therefore, in
the opinion of this Court, there is an apparent technical effect of the
invention claimed and, therefore, the objection of non-patentability taken
under Section 3(k) of the Act cannot sustain.
Objection on Divisional Application
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48. The only other objection which has been taken in
6500/DELNP/2011 is of it not being a valid divisional application under
Section 16(1) of the Act. In this regard, reference has been made by the
appellant to the International Preliminary Report on Patentability [‘ IPRP ’]
issued by the International Search Authority during the PCT phase of the
subject application. It was observed in the IPRP that Claims 1 – 30, 31 –
61, and 62 – 82 of the parent application constitute distinct inventions as
they relate to different inventive concepts. It was buttressed by appellant’s
counsel that the subject application was filed as a divisional application
which has Claims of 62 – 82 of the parent application. Relevant
observations of the IPRP are extracted as follows:
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49. Moreover, reference is also made to decision of a Division Bench of
this Court in Syngenta Ltd. v. Controller of Patents and Designs ,
2023:DHC:7473-DB which dealt with maintainability of a divisional
application, and it was observed by this Court as under:
25. We, on due consideration of Section 16, fail to
find or perceive an intended distinction or
dichotomy with respect to the filing of Divisional
Applications based on whether the same is filed
suo moto or is activated by an objection that may
be raised by the Controller. Section 16(1) does
not appear to warrant any such distinction being
carved out. We are thus of the firm opinion that
irrespective of whether the Application is filed by
the applicant suo moto or to remedy an objection
raised by the Controller, the Divisional
Application could well be maintained in either of
those situations, subject to the plurality of
inventions being evidenced from the disclosures
made in either the provisional or the complete
specification.
…
32. We thus find ourselves unable to concur with
the view as expressed in Boehringer Ingelheim
and the said judgment shall consequently stand
overruled. We hold that a Divisional Application
moved in terms of Section 16 of the Act would be
maintainable provided the plurality of inventions
is disclosed in the provisional or complete
specification that may have been filed. We are
further of the considered opinion that Section 16
does not suggest or conceive of a distinction
between the contingency of a Divisional
Application when moved by the applicant of its
own motion or where it comes to be made to
remedy an objection raised by the Controller. In
either of those situations, the plurality of
inventions would have to be tested based upon the
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disclosures made in either the provisional or
complete specification. The Reference stands
answered accordingly.
(emphasis added)
50. Appellant’s counsel also pointed out that patents on same or
substantially same inventions have been granted in numerous foreign
jurisdictions; a list of all corresponding applications is provided in the
pleadings and extracted as under:
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51. It has been pointed out that divisional applications filed from the
PCT application have been granted in the US, Australia, and Canada with
Claims having similar scope as that of the subject application.
52. The objection under Section 16(1), therefore, does not sustain. In
any event, it is noted that the objection was taken in respect of only one of
the subject applications, and not both subject applications.
Residual issue under Section 2(1)(ja) of the Act
53. The objections regarding Sections 3(k) and 16(1) of the Act have
been addressed in the discussion above, however, a residual issue remains
with respect to the objection of lack of inventive step initially raised by the
respondent. Hearing notices raised objections inter alia on the grounds of
clarity and conciseness, formal requirements, invention under Section
2(1)(ja) of the Act, non-patentability under Section 3, other requirements,
etc.
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54. Objection per Section 2(1)(ja) of the Act is notable pointing out the
following prior art documents in the respective applications, as noted in the
impugned orders:
…
55. In response to the hearing notices, appellant, while addressing all
objections, categorically responded to Controller’s objections vis-à-vis
inventive step under Section 2(1)(ja) of the Act [ not reproduced herein for
the sake of brevity ]. The impugned orders, however, rejected the patent
applications, in light of grounds inter alia under Section 3(k) and Section
16(1). The impugned order is silent on submissions regarding inventive
step. This may have been since the applications were being rejected on
maintainability under Section 3(k) of the Act, on which the impugned
orders are focused. Considering the issue of maintainability is decided in
favour of appellant, it would necessitate that objection on lack of inventive
step based on prior art(s), would need to be assessed. The impugned orders
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have not commented upon the tenability of appellant’s submissions in
response addressing this issue.
Conclusion
56. Present appeals stand allowed to the limited extent that the
objections on the aspects of Section 3(k) and Section 16(1) of the Act are
not tenable; impugned orders are set aside to that extent.
57. However, on the aspect of Section 2(1)(ja) of the Act, matter is
remanded to the Office of Controller General of Patents & Designs for
fresh consideration with respect to the same. It is directed that a de novo
hearing notice may be issued, to this limited extent, and the applications be
examined afresh, within a period of three months of the receipt of this
order. It is made clear that this Court has not examined the matter on the
aspect of lack of inventive step/ Section 2(1) (ja)/prior art(s), and it is up to
the Controller to assess the same.
58. Registry is directed to supply a copy of this judgement to the Office
of the Controller General of Patents, Designs and Trademarks of India on
the email llc-ipo@gov.in for information and compliance.
59. Appeals stand disposed of in the above terms. Pending applications,
if any, are rendered infructuous.
60. Judgment be uploaded on the website of this Court.
(ANISH DAYAL)
JUDGE
JULY 30, 2024/MK
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