C.A.(COMM.IPD-PAT) 439/2022

The invention claimed in the patent application is a mere sequence of instructions stored in hardware without solving any technical problem or offering any technical advancement to the hardware.

The article discusses an appeal filed by Kroll Information Assurance, LLC (Appellant) against the order of Controller General of Patents, Designs and Trademarks (CG). The appeal concerns the refusal of an Indian Patent Application No. 8100/DELNP/2007 for a system designed to locate individuals via a peer-to-peer network. The Appellant’s application (claiming priority from a U.S. application dated April 12, 2005) faced multiple objections during examination, including non-inventiveness and being categorized as an algorithm or computer program per se, which are not patentable under Indian law.

The CG refused the application on several grounds:

1. The proposed amendments made to the claim 1 were beyond the scope of the original claims and not permissible under Section 59 of the Patents Act.
2. The claims were non-inventive in light of prior art and contrary to Section 2(1)(ja) of the Patents Act.
3. The subject matter was categorized as an algorithm or computer program per se, thus excluded from patentability within the meaning of Section 3(k) of the Patent Act.

Appeal Before the High Court

Appellant contentions

Permissibility of Amendments

The Appellant argued that the CG erred in rejecting the proposed amendments under Section 59 of the Patents Act. They contended that the features (iii) and (iv) incorporated in the form of amendments to the main claim narrowed down the scope of the original claims. These limitations were already disclosed and supported by the complete specification.

Technical Challenge and Effect

The Appellant emphasized that the invention addressed a significant technical challenge as it addressed the inadvertent or unauthorized sharing of sensitive data on peer-to-peer networks due to user error, malware, or malicious activity. The invention aimed to identify and mitigate such sharing, thereby enabling a secure environment in peer-to-peer networks through the identification and removal of sensitive content or by restricting responsible users.

Hardware Implementation

The Appellant argued that CG failed to consider the hardware implementation in the subject application, which was in amalgamation with the software modules. They claimed that the respondent erroneously considered the implementation independently, focusing specifically on software modules and ignoring the technical effect exhibited by the subject application.

Prior Art Not Relevant

The Appellant contended that the prior art D1, cited by the CG in respect of the objection on inventive step, was concerned with a client-server network, which is different from a peer-to-peer network as claimed in the subject patent application. They argued that D1 did not disclose or suggest locating a particular type of person who is inadvertently sharing information based on a search and receiving a response from that person. Furthermore, D1 did not suggest locating a malicious person who intentionally selects a folder as the shared folder that contains sensitive information.

Common General Knowledge

The Appellant argued that CG failed to establish the common general knowledge available on the priority date of the subject patent application. They claimed that the respondent did not properly construe the claims and identify their actual technical contribution and technical advancement exhibited by the subject invention.

Grant of Patent in Other Jurisdictions

The Appellant highlighted that the corresponding applications in major jurisdictions, including the USA, China, Australia, and Japan, had proceeded to the grant of a patent.

High Court’s Decision

1. The Court first examined whether the proposed amendments to the claims were permissible under Section 59 of the Patents Act. The CG had rejected the amendments, stating that they were beyond the scope of the original claims. However, the Court found that the amendments were actually limitations that narrowed down the scope of the original claims and were in the nature of an explanation. The Court concluded that the proposed amendments were permissible under Section 59 of the Act.
2. The Court examined the invention, which pertains to a system and method for identifying specific types of people or specific types of information on a peer-to-peer network. The system operates by using specific search terms to query the network, with the objective of profiling users or locating particular types of data based on the search results. The system uses standard computing components such as a processor, memory, storage, and conventional software to execute keyword-based searches across the peer-to-peer network. The Court found that the invention primarily involved conventional computer operations and did not demonstrate a significant technical advancement over existing technologies.
3. The court noted that search was performed based on keywords given by the user, which reflected conventional computer program behaviour. Therefore, it could not be stated that the computer program was enhancing the functionality of the hardware.
4. The Court concluded that the features claimed in Claims 1 to 7 fell under the category of computer program per se and Claims 8 to 10 fell under the category of algorithms. Therefore, they collectively fell within the scope of excluded subject matter under Section 3(k) of the Act, being directed towards a mere algorithm or computer program per se without any demonstrable technical advancement.
5. The Court referred to previous judgments, including Lava International Ltd. v. Telefonaktiebolaget LM Ericsson and Microsoft Technology Licensing v. Controller of Patents & Designs, which held that inventions solely directed towards algorithms or computer programs per se would not satisfy the test of patentability. However, if the algorithms are directed at enhancing the functionality of a system or hardware component, the effect or functionality derived by the system or hardware component is a patentable subject matter.

Court’s Ruling

Applying the rationale of the CRI Guidelines and previous judgments to the present case, the Court concluded that the invention did not demonstrate a significant technical advancement and fell within the excluded categories of algorithms and computer programs per se under Section 3(k) of the Act.