INDIA: Delhi High Court Clarifies the ‘Technical Effect’ Requirement Under Section 3(k) of the Patents Act

In a recent decision, Blackberry Limited v. Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 318/2022],  the Hon’ble Delhi High Court provided critical guidance on the interpretation of Section 3(k) of the Indian Patents Act, 1970 (hereinafter referred to as ‘the Act’). The case revolved around Blackberry’s (the ‘Appellant’) patent application for a method titled “Auto-Selection of Media Files,” which was initially refused by the Indian Patent Office (IPO) (the ‘Respondent’) on the grounds of non-patentability under Section 3(k) of the Act. The judgment, pronounced on August 30, 2024, by Justice Prathiba M. Singh, clarified the scope of Section 3(k) of the Act concerning computer-related inventions (CRIs) and set important precedents for future cases.

BACKGROUND

The present appeal was filed to challenge an order by the IPO, which had refused Indian Patent Application No. 717/DEL/2009. The application, initially filed with 12 claims, related to a method for managing media content on devices, such as smartphones, by automatically selecting and categorizing media files based on confidence levels derived from user preferences. Pursuant to the issuance of the First Examination Report (the ‘Office Action’), the Appellant amended its claims, and the number of claims was reduced from 12 to 2.  Blackberry’s application claimed multiple technical advancements, including the use of a cache manager for efficient media management.

The IPO rejected the application under Section 3(k) of the Act, which excludes “mathematical or business methods or a computer program per se or algorithms” from patentability. The primary ground for refusal was that the claimed invention was essentially a computer program and lacked the technical effect necessary to qualify as a patentable invention.

CONTENTIONS OF THE APPELLANT

Technical Effect and Advancement: Blackberry argued that the invention addressed a technical problem by dynamically optimizing the storage and management of media content on user devices. The system enabled efficient synchronization of media files across devices and offered significant improvements in user experience and device capability.

Corresponding Foreign Family Applications: The Appellant highlighted that the corresponding patent applications had been granted in jurisdictions such as the United States, Australia, Japan, and China. However, the European Patent Office (EPO) had rejected the application, a decision the appellant contended was erroneously relied upon by the IPO without proper independent analysis.

Improper Application of Section 3(k): Placing reliance on the Delhi High Court’s judgment in Ferid Allani v. Union of India [W.P.(C) 7/2014 & CM APPL. 40736/2019], Blackberry emphasized that CRIs with a technical effect are not barred under Section 3(k). The Appellant asserted that features like confidence-level-based categorization and cache management demonstrated a technical contribution beyond a mere algorithm.

CONTENTIONS OF THE PATENT OFFICE

The Respondent maintained that the claimed invention merely automated routine tasks using standard algorithms on general-purpose computers. According to the Respondent, the invention lacked any technical effect or contribution and was therefore ineligible for patent protection under Section 3(k) of the Act. It was further argued that similar objections raised during the prosecution of the corresponding application before the EPO also applied to the Indian context.

COURT’S ANALYSIS

The Hon’ble Court conducted a detailed examination of the claims and the underlying technology, focusing on the following aspects:

Scope of Section 3(k): The Court reiterated that Section 3(k) of the Act does not categorically exclude all CRIs from patentability. Instead, the exclusion applies only to inventions that lack a technical effect or contribution. The Court noted that the subject invention had a technical implementation and a definitive impact on the user experience through the device of the user. It enhanced device functionality by enabling efficient media management and synchronization, and also enabled autonomous operation of device without any specific intervention by the user, which constituted a technical advancement. Therefore, the Court held that "any invention which enhances the capability of a device beyond a mere algorithm or business method is not barred under Section 3(k)."

Comparison with Prior Art: The Court distinguished the claimed invention from the prior art cited in the Office Action, including US Patent No. 765, which focused on selecting multimedia files based on criteria such as popularity weighting and recency of access. Blackberry’s invention, on the other hand, introduced novel features such as:

• Confidence-level-based categorization of media files;

• Dynamic cache management to update libraries in real-time; and

• Optimization of storage through filtering based on file size and availability.

  
  

Improper Reliance on EPO Decision: The Court criticized the verbatim adoption of the EPO’s reasoning by the IPO without independent analysis. Disagreeing with EPO’s analysis that the purpose of the invention is merely to select files based on popularity ratings and the same is not linked to a technical task, the Court held that “the enhancement of the capability of any device to such a far-reaching extent that the functionality of the device is made more efficient within the same storage space, is a concrete technical effect and technical contribution.”

Technical Effect and Patent Eligibility: The Court concluded that the invention’s ability to optimize storage, enhance device functionality, and provide a seamless user experience demonstrated a clear technical effect. "The subject invention enhances the functionality and the capacity of the device almost in an unlimited manner. It is also enabling autonomous operation of device without any specific intervention by the user." the Court stated.

Additionally, the Court relied on an extract from Terrell on the Law of Patents, 19th Edition (South Asian Edition), which highlights the conditions under which the implementation of computer programs may be deemed patentable. It stated that “…two types of technical advantage which are attributable to computer programs may suffice for patentability. The first is where the program solves a problem within the computer itself. The second is where the effect of the program is not merely within the computer but where the beneficial consequences feed into other devices.”

 COURT’S DECISION

Allowing the appeal, the Court directed the Patent Office to grant the patent, subject to amendments limiting the scope of the claims to the technical advancements identified. Support for issuing such a direction was drawn from the decision of the Coordinate Bench of the Court in Societe Des Produits Nestle SA v. The Controller of Patents and Designs and Anr., [C.A.(COMM.IPD-PAT) 22/2022]. Specifically, the Court directed the Appellant to characterize the claims of the subject patent to limit the scope of the patent to the features of 'automatic selection (of media files)’ and 'updating by a cache manager'.

CONCLUSION

This decision marks a significant step in clarifying the scope of Section 3(k) of the Act and the requirement of technical effect for patent eligibility of CRIs in India. The Court’s ruling marks a shift towards a more inclusive approach to software patents in India, distinguishing between mere algorithms and inventions that enhance device functionality. Notably, by granting the patent directly rather than remanding it back to the Patent Office, the Court has adopted a pro-applicant stance saving applicants considerable time and effort, and ensuring that innovative technologies receive appropriate legal protection without unnecessary procedural delays.

For a comprehensive discussion on Section 3k of the Indian Patents Act, along with an overview of other relevant decisions, please refer to the article titled “Code, courts, and conundrums: traversing the shifting sands of Section 3(k)” - (available at https://www.lexology.com/library/detail.aspx?g=b7b738aa-774b-4248-9347-46973e700558).