THE EXPANDING SCOPE OF PATENTABILITY OF COMPUTER RELATED INVENTIONS: A WELCOME DEVELOPMENT
In a highly anticipated decision in the Ferid Allani matter[1], the Intellectual Property Appellate Board (IPAB) has upheld the patentability of Computer Related Inventions (CRI) clarifying that the invention in question had a significant technical contribution to the state of art and possesses critical technical effect and thus deserves to be patented. The decision may be a crucial step in India’s evolving CRI jurisprudence as it clarifies the cloud surrounding Section 3(k) of the Indian Patents Act that specifically states that “a mathematical or business method or a computer programme per se or algorithms, are not patentable under the Act.
The IPAB, while recognizing the patentability of the said invention due its technical efficacy held that the mere fact that a computer program is used for effectuating a part of the invention cannot be a bar to patentability and that an invention must be examined as a whole taking into consideration its technical effect and technical contribution.
BACKGROUND OF THE DISPUTE:
Ferid Allani’s patent application was filed under method claims and system claims. The said application was subsequently rejected by the Patent Office citing limitations to the registrability of Computer Related Inventions under the Indian Patents Act. Upon receiving the rejection order by the Patent Office, Allani preferred an appeal with the Intellectual Property Appellate Board (IPAB) wherein the Appellate Board took a similar view and thus dismissed the appeal. The said order of the IPAB was challenged by the Petitioner vide a Writ Petition before the Hon’ble High Court of Delhi. The Court directed the re-examination of the patent application and made some noteworthy observations vis-à-vis the meaning of “per se” in Section 3(k) of (Indian) Patents Act, 1970 (Act) and the meaning of “technical effect”. The Court held that “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 non-patentable 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 including in digital and electronic products is crucial in determining the test of patentability.”[2]
LEGISLATIVE INTENT OF “PER SE”:
Placing reliance on the meaning of Section 3(k) of the Indian Patents Act, the Court observed that this bar on patenting is in respect of `computer programs per se....' and not all inventions based on computer program, and that the words 'per se' were incorporated in Section 3(k) of the Act to ensure that inventions based on computer programs are not refused patents. While the inclusion of the term “per se” further led to confusion regarding the status of patentability of Computer related inventions, it served an important purpose of removing blanket exclusion for all computer related inventions with respect to their “patentability”.
Vide the present order, the IPAB granted a patent to Ferid Allani for “Method and Device for Accessing Information Sources and Services on the web”. It is pertinent to mention that the said order countermands the Order of the Indian Patent Office which had rejected the Patent Application concluding that the method claims were a computer program and that the system claims lack novelty as well as inventive step.
TECHNICAL EFFECT:
The IPAB observed that the CRI Guidelines (2013) clearly provide for examples that constitute a ‘technical effect’. These include higher speed, reduced hard-disk access time, more economical use of memory, more efficient database search strategy, more effective data compression techniques, improved user interface, better control of robotic arm, improved reception/transmission of a radio signal. Thus, while setting aside the order of the Patent Office, the IPAB held that the “technical problem which the invention solves in the present application is that the present invention was a critical addition to the functionality of the internet in 1999”. It further added that “as the present invention falls under at least the following indicators of technical effect i.e. higher speed, more economical use of memory and a more efficient database search strategy, the present invention is patentable”.
In order to reach its present position, the IPAB placed reliance on the Guidelines for Examination of Computer Related Inventions (CRI) in February 2016 and thereafter on the revised guidelines issued in the year 2017. The aforesaid provisions of the Act and the guidelines issued thereunder form the legislative and the legal basis and background that deals with the aspect of patentability of CRI in India.
COMMENT:
While the evolution of the CRI panorama in India had been overshadowed by some confounding back and forth on the CRI Guidelines by the Indian Patent Office, the present decision is sure to transform the CRI patent landscape of India. The decision throws significant light on the crucial issues by defining “technical effect” and touching upon the need of demonstrating “technical contribution” in order to determine the patentability of a CRI. The paramount revision of standards for adjudicating the patentability of computer related inventions, have enabled the Indian Patent system to align with global patent standards. Moreover, the said order serves as a crusader in facilitating the Indian Patent regime to meet the dynamism in the field of artificial intelligence, blockchain technologies and other digital products, which have been denied registration merely due to Section 3(k) of the Indian Patents Act. While understanding the patentability of computer implemented inventions in India is a herculean task, the said order provides the much-needed impetus to inventors as it clears the way for genuine innovators in the field of CRIs to seek patent protection for their inventions.
[1] Ferid Allani Vs. Assistant Controller of Patents and Designs, accessible at
[2] Ferid Allani vs Union Of India & Ors on 12 December, 2019, accessible at https://indiankanoon.org/doc/90686424/
The article was originally published on www.lexology.com on August 14, 2020 and can be accessed here.
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