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India: Computer-related inventions to be tested on technical contribution


The Delhi High Court has clarified the patentability of a software or computer-related invention (CRI) while deciding a writ petition (W.P.(C) 7/2014) challenging the order of the Intellectual Property Appellate Board (IPAB) which held that the invention lacks novelty and inventive step along with the technical requirements needed under Section 3(k). The IPAB in this case 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 the invention lacking novelty and inventive step and patentability under Section 2(1)(j) and 3(k) respectively of the Patent Act.

CRIs and the requirement of novelty

The Indian Patent Act clearly restricts the patentability of a computer program per se unless used in conjunction with hardware. The debate has been on the requirement of novelty in hardware. To clarify the criteria, the patent office has from time to time issued guidelines which to an extent have added to the confusion. A brief snapshot of the guidelines and their impact is below.

With the 2017 guidelines coming into force, the Patent Office has been more flexible when it comes to examining and granting patents on CRIs if the patentee is able to show that the invention solves the technical problem in a technically advanced manner and also that it has the support of hardware components. In other words, novel hardware is not a requirement now. However, applying the guidelines uniformly in all cases has been a challenge. In that context the decision of the court, discussed below, is pertinent.

Facts of the case

1) A patent application No. IN/PCT/2002/705/DEL was 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 the Patent Office on the basis that the invention lacked novelty and inventive step and did not meet the patentability requirements under Section 2(1)(j) and Section 3(k) respectively 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 to the Draft Guidelines for Examination of Computer Related Inventions issued in 2013, 2016 and 2017.

2) Section 3(k) has a long legislative history and various judicial decisions have 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 are on computer programs, however, they 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 cars and other automobiles, microwave ovens, washing machines, or refrigerators, they all have some sort of computer programs in-built into them. Thus, the effect that such programs produce including in digital and electronic products is crucial in determining the test for 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.

The court thus directed the patent application to be re-examined.

To sum up, the court's order coupled with 2017 guidelines will foster an overall environment of patentability for CRIs. It will also help streamline examination of computer-related inventions under Section 3(k) of the Patent Act. Further keeping this court direction in mind, the patent office will hopefully consider the 2017 guidelines in letter and spirit. They remove the requirement of novel hardware and emphasise that CRIs are to be judged on the basis of "technical effect" and "technical contribution".

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