Delhi High Court to IPO: Invention Should Not Be Deemed ‘Computer Program Per Se’ Due to Algorithms & Computer-Executable Instructions

Delhi High Court to IPO: Invention Should Not Be Deemed ‘Computer Program Per Se’ Due to Algorithms & Computer-Executable Instructions

The Delhi High Court has essential informed the Indian Patent Office (IPO) to adopt a more comprehensive approach when assessing CRIs, taking into account technical effects and contributions provided by the invention rather than solely focusing on the implementation of algorithms and computer-executable instructions. An invention should not be deemed a computer program per se merely because it involves algorithms and computer-executable instructions; rather, it should be assessed based on the technical advancements it offers and its practical application in solving real-world problems.

In the present case, an appeal was filed by Microsoft Technology Licensing, LLC, which focused on the controversy surrounding the interpretation of the phrase “computer program per se” in the exclusionary Section 3(k) of the Patent Act, 1970 (the Act).

The Controller of Patents had rejected its application for grant of patent in respect of “methods and systems for authentication of a user for sub locations of a network location.” The controller found the invention to be non-patentable under Section 3(k) of the Patents Act as well as having other unmet requirements under the legislation.

The single judge Justice Sanjeev Narula noted that neither there was any mention of computer program or algorithm is found under the aforementioned Section 3 of the Act nor there was any mention of the term “per se” in the original Patents (Second Amendment) Bill, 1999.

“The interpretation of ‘per se’ under Section 3(k) of the Act has been entirely overlooked by the Controller. 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,” the Court observed.

The Court thus reinforced the views expressed in Ferid Allani vs. Union of India and Ors., concerning the meaning of the term “computer program per se” in Section 3(k) of the Act.

The Court held that the patent applications should be considered in the context of established judicial precedents, Section 3(k) of the Act, extant guidelines related to CRIs, and other materials that indicate the legislative framework.

The Court avowed that, “if a computer-based invention provides a technical effect or contribution, it may still be patentable. The technical effect or contribution can be demonstrated by showing that the invention solves a technical problem, enhances a technical process, or has some other technical benefit. The mere fact that an invention involves a mathematical or computer-based method does not automatically exclude it from being patentable. The invention can still satisfy the patentability requirements, including the requirement for a technical effect or contribution, to be eligible for patent protection.”

In other words, the Court asserted that method claims in computer program patent may be patentable if it involves a technical advancement and provides a technical solution to a technical problem and has an improved technical effect on the underlying software.

The Court emphasized that while it is essential to assess each application individually, considering the unique facts and technical aspects of each claimed invention, providing examples of both patent-eligible and non-eligible inventions in the guidelines would be beneficial.

The Court regarded that, both the European Patent Office [“EPO”] as well as United States Patent and Trademark Office [“USPTO”] have provided examples of patent-eligible and non-eligible inventions in its guidelines for examination of inventions.

Therefore, the judge opined that the Indian Patent Office must also undertake the exercise of providing indicators to the examiners by citing exhaustive list of worked examples, relating to patent eligibility. These practice hints would help examiners to be consistent with the eligible cases and distinguish the ineligible cases.

Further, the Court held that the Controller had entirely missed the point and his approach was misguided Mere conclusion that Claims 1-28 are implemented on computer and are computer-executable instructions/ algorithms performed on a general-purpose computing device is not the correct approach for rejecting a patent application.

The fact that the claimed invention involves a set of algorithms executed in a pre-defined sequential manner on a conventional computing device does not necessarily imply that it lacks a technical effect or contribution. It is possible that the invention provides a technical solution to a technical problem, and the computer program use is merely a means to achieve the technical solution, avowed the judge.

The Court asserted that if the subject matter is implemented on a general-purpose computer, but results in a technical effect that improves the computer system’s functionality and effectiveness, the claimed invention cannot be rejected on non-patentability as ‘computer program per se.’

Hence, even a mathematical method or computer program can be used in a technical process carried out by technical means, such as a computer comprising hardware or a suitably configured general purpose computer, the judge stated.

Accordingly, the Court quashed the impugned order and said that the patent in question does not fall within the excluded categories.

Remanding the matter back to the Controller for further action, the Court directed that Microsoft’s patent application shall be re-examined on objections regarding lack of novelty and inventive step.