202001.15
13

The Delhi High Court asserts- Test Computer Program on Fulcrum of “Technical Contribution”

The Delhi High Court clarifies patentability of Computer Related Invention/s while deciding a writ petition challenging the order of the Intellectual Property Appellate Board (IPAB). IPAB had dismissed the appeal filed by the petitioner (i.e. patentee) challenging the order of the Patent Office refusing the patent application on the basis of Invention lacking novelty and patentability under Section 2(1)(j) lacking novelty and inventive step and Section 3 (k) of the Act being a computer program. This matter was decided before the guidelines for examining computer related Invention/s were issued by the Indian Patent Office in the years 2013, 2016 and 2017. A review of 2017 guidelines covered by us can be accessed from https://rnaip.com/software-patentability-in-india-a-case-of-one-step-backward-one-step-forward/.

Facts of the Case:

  1. A patent application No. IN/PCT/2002/705/DEL (filed by FERID ALLANI) seeking grant of patent for a “method and device for accessing information sources and services on the web”. The claims in the patent consisted of both method claims and device claims.
  2. The application was rejected by Patent Office on the basis that Invention lacks novelty and patentability under Section 2(1)(j) and Section 3 (k) of the Act.
  3. The Petitioner’s appeal before the IPAB challenging the order of rejection was also dismissed by the IPAB. The reasoning given by the IPAB was that the patent application did not disclose any technical effect or technical advancement.

Court’s Observation:

  1. The Court referred Draft Guidelines for Examination of Computer Related Inventions issued in 2013, 2016 and 2017.
  2. The Court opined, Moreover, Section 3(k) has a long legislative history and variousjudicial decisions have also interpreted this provision. The bar on patenting is in respect of `computer programs per se….’ and not all inventions based on computer programs. 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 nonpatentable 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.
  3. Patent applications in these fields would have to be examined to see if they result in a `technical contribution”.
  4. Across the world, patent offices have tested patent applications in this field of innovation, on the fulcrum of “technical effect” and “technical contribution”. If the invention demonstrates a “technical effect” or a “technical contribution‟ it is patentable even though it may be based on a computer program.
  5. The meaning of “technical effect‟ is no longer in dispute owing to the development of judicial precedents and patent office practices internationally and in India. There can be no doubt as to the fact that the patent application deserves to be considered in the context of settled judicial precedents which have now laid down the interpretation of Section 3(k), the Guidelines and other material including the legislative material.

Accordingly, the court directed the patent application to be re-examined.

To sum up, the order comes at appropriate time and reinforces that innovation in the field of computer applications should be judged on the basis of “technical effect” and “technical contribution”. Keeping this order in mind, we do hope the patent office will streamline examination of computer related Invention/s as a non-patentable subject matter under Section 3(k). The Office would further consider the guidelines in letter and spirit which liberate/s the requirement of novel hardware.