Computer-related Innovations Are Patentable in India

Computer-related Innovations Are Patentable in India

Context

Patents related to computer-related innovations also known as “CRI” cannot be granted until the registration criterion framed in Section 3(k) of the Indian Patents Act, 1970, has been passed or not.

The Delhi High Court (HC) has comprehensively reviewed the legislative history of the aforesaid section, including the statement of objects and reasons to the Patents (Amendment) Act, 2005, the report of the joint Parliamentary Committee on Patents (Second Amendment) Bill, 1999, parliamentary debates, etc., and has succinctly summarized the approach to be adopted by the Indian Patent Office, when assessing the patentability of CRIs.

The case in question is Microsoft Technology Licensing, LLC (“Microsoft; Appellant”) v. The Assistant Controller of Patents and Designs (“Respondent”), 2023 DHC 3342.

Matrix of Facts

Microsoft filed an appeal with the HC requesting, among other things, that the decision made by the Controller General of Patents and Designs (the “impugned order”) be overruled.

In that decision, the Controller General had rejected an application for a patent entitled “Methods and Systems for authentication of a user for sub-locations of a network location” (application number 1373/DEL/2003), citing the invention’s failure to meet Section 3(k) of the Act.

The appellant contended that the impugned order incorrectly interpreted Section 3(k) of the Act and that the legislature’s intention in adding the term “per se” does not imply that patents related to computer programs will not be granted at all; rather, the purpose was to reject the grant of patent protection to computer programs in and of themselves.

The appellant further contended that the related patent should be granted a patent because it has a technical contribution and effect that improves the security of current computers and computer networks.

Responses From the Respondent

The respondent said that the claimed invention is nothing more than an “algorithm”, which is by definition a collection of guidelines that must be adhered to solve an issue.

The subject innovation is not patentable since the set of instructions is being implemented on a computer program in and of itself.

The invention improves user experience and efficiency at the user interface level; it has no technical impact on the computer system or hardware itself.

Ruling of the Court

The court emphasised the significance of signposts in assessing the “technical effect” and “technical contribution” of CRIs. Citing a long number of worked cases, the Court held that the Indian Patent Office should take on the duty of giving examiners indicators/guidelines on patent eligibility.

The Respondent’s summary rejection of the application, claiming that it involves a set algorithm that carries out instructions in a predetermined sequential order, was deemed incorrect by the Court.

The invention, according to the Court, offers a technical remedy for the security risk posed by using cookies for user authentication during network for the security risk posed by using cookies for user authentication during network sublocations.

This technical approach offers a patentable technical effect and contribution in addition to going beyond the user interface.

As a result, the impugned judgement was declared set aside, and the application was sent back to the Controller for additional review of the remaining patentability thresholds (which the Controller had not yet addressed at the time the impugned order was issued).