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  • Namrata Dua and Ishita Kapoor

Inclusion of Algorithms or computer-executable instructions in inventions is not barred under S.3(k)

Inclusion of Algorithms or computer-executable instructions in inventions is not barred under S.3(k)

In a recent judgment concerning an appeal filed by Microsoft Technology Licensing, LLC (hereinafter referred to as the ‘Appellant’) against the refusal order passed by the Assistant Controller of Patents (hereinafter referred to as the ‘Respondent’) rejecting the Appellant’s Application, the Hon’ble High Court of Delhi set aside the impugned order and focused on the interpretation of the phrase “computer program per se” as stated in the Section 3(k) of the Patents Act, 1970 (hereinafter referred to as the ‘the Act’). The Court further accentuated that the Controller failed to acknowledge the true technical nature and advancements provided by the invention and solely focused on the implementation of the same.

Key Facts:

The Appellant filed Indian Patent Application No. 1373/DEL/2003 titled “Methods and Systems for Authentication of a User for Sub-Locations of a Network Location”, and the Controller rejected the application under Section 15 of the Act, finding the claimed invention to be non-patentable under Section 3(k) of the Act and having other unmet requirements.

Contentions put forth:

The Appellant alleged that the Controller had misinterpreted Section 3(k) of the Act by concluding that the claims relate to an algorithm implemented by a computer program per se. It was submitted that the Legislature’s intent to add the words “per se” does not mean that patents to a computer program shall not be granted altogether, rather the intent was to reject grant of patent protection to computer programs as such. It was argued that the technical contribution/ effect of the claimed invention does not lie solely in the excluded subject matter but rather in the combination of the software with the hardware components.

Contrary to the Appellant’s averments, the Respondent affirmed that the claimed invention is merely an “algorithm” and hence, the subject invention is non-patentable. It was alleged that the claimed invention operates at a user-interface level and enhances user experience/ efficiency and does not have any technical effect or contribution to the hardware/ computer system itself.

Court’s Analysis and Decision:

While adjudicating, the Court discussed the case of Ferid Allani vs Union of India & Ors. [2019 SCC Online Del 11867] and the guidelines issued by the Patent Office for examination of Computer Related Inventions (CRIs). Further, upon scrutinizing the legislative history of Section 3(k) of the Act, it was noted that the term “per se” was added to clarify that “computer programmes as such” were non-patentable, however, the intent of the Patents (Amendment) Act, 2005 was to allow grant of patents to CRIs that involve a novel hardware component or provide a technical contribution to the prior art beyond the program itself.

The Court opined that the Controller’s misinterpretation of Section 3(k) of the Act, resulted in erroneous rejection of the subject application. It was noted that the claimed invention offers a novel and inventive technical solution to a security problem related to the authentication of users for accessing sub-location(s) within a network location. Additionally, 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. This improvement in the user-interface is a result of the technical solution that involves complex network-level communication protocols.

Conclusively, the Court opined 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 further emphasized the importance of creating signposts while assessing the CRIs and their periodical updation on the basis of judicial guidance. Such signposts would not only ensure consistency in the examination process across different Examiners but would also enable the Applicants to draft patent applications clearly demonstrating/ delineating the technical merits of their inventions, if any.

In addition to the above, the Court noted that, “It is essential for the Indian Patent Office 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.”.

Consequently, the impugned order of the Controller was set aside by the Hon’ble Court and the matter was remanded back to the Controller for re-examination on the objections regarding lack of novelty and inventive step. As per the Court’s directive, the Indian Patent Office issued a Hearing notice and within one month the application was granted.


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