This article is written by Vaidha Sharma, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws, from LawSikho.

Introduction

A proud member of twenty first century where the man has landed on to Moon, the future holds a distant dream to colonize Mars, diseases like smallpox which were once life threatening has left the face of earth and Humanity fighting against the Covid pandemic, with new contenders every day in race for vaccine, Inventions have been the left, right and centre of the World. 

The Flintstones would have been the reality if it were not for inventions be it the first spark of fire, the first wheel or computers. 

The progressive outlook endorsed by Hon’ble Delhi High Court in Ferid Allani V Union of India and Ors. opened new horizons for patentability of computer related inventions in India which will also shed some light on the inclusiveness of Section 3(k).The order will be seen as a major force to boost the software development and making patents regime aavourable one in India. 

Patentability of computer related inventions

In the absence of Intellectual Property Rights the world would surely not be the same as we see it. Patent is not merely any right but it is the right of exclusiveness, a monopoly extended to an inventor to benefit from the efforts, time and knowledge bank put forth by him to invent and to commercially exploit an invention for a limited period of time.

Though the idea of having something patented under ones name is alluring, but not everything is Patentable. A thing has to check on few parameters to be an Invention worthy of being Patentable under The Patents Act, 1970, which includes:

1. Novelty, i.e., an invention must be new and original.
2. Non-obviousness, i.e., to a person of ordinary skill set in the respective field, the invention must not be obvious or lacks any creative edge to it. 
3. Utility/Industrial Application, if an invention does not have a use, it serves no purpose, or cannot produce the desired result in new and effective way, the invention will not have any industrial utility.

Section 3 of Patents Act, 1970 provides for what are not Inventions.

Section 3(k) of Act provides that “a mathematical or business method or a computer programme per se or algorithms.”

A manual published on March 1, 2019 for Patent office practice and procedure, clearly stated that under Sec 3(k), mathematical method, business methods, computer programs and algorithms does not form part of patentable subject matter.

The earlier phase of computer related inventions

Patent (Second Amendment) Bill was introduced in Parliament in 1999, which was the first instance regarding computer related inventions in India. Subsequently a Joint Parliamentary committee was formed on December 22, 1999. This committee suggested a slight change in Section 3(k) of the Act by inserting “per se” into the phrase “a mathematical or business method or a computer programme or algorithm” which would make the same unpatentable.

This “per se” was inserted with the aim to prevent those inventions which are ancillary to computer programs so that they are not out rightly rejected.

Section 3(k) now reads as “a mathematical or business method or a computer programme per se or algorithm”.

According to the committee it was done to distinguish and grant patent for software inventions and not underlying computer programs. The recommendation by committee was enacted in form of Patents (Amendment) Act, 2002.

The next big game changer happened after 2013 and with introduction of Guidelines for Examination of Computer Related Inventions (CRIs).

Computer related inventions (CRIS) guidelines

Section 3(k) being extremely inclusive there were lots of ambiguities and unclarity regarding the same and three sets of CRI guidelines were brought in to address those issues which include 2013 ‘draft guidelines’, 2016 ‘guidelines’ and 2017 ‘revised guidelines’. Apart from defining major terms and to remove vagueness, it broadly focused on ‘Technical effect’ and ‘Technical advancement.’

Essentials of a ‘Technical effect’

• Solution to a technical error or problem.
• Invention must as a whole should resolve and help to overcome that.

To make it more clear guidelines provided for some examples for the same like high speed, efficient data search, improved reception, reduced hard-disk access time. This list was a non-exhaustive one.

Essentials of a ‘Technical advancement’:

• Contribution to the existing state of Art.
• A technical advancement will always have a technical effect but not vice-versa, i.e., if an invention results in some technical advancement it will improve the existing state of art, but technical effect necessarily will not have technical advancement in all the cases.

The guidelines also encourage for newness and novelty and non-obviousness in hardware system so that it is not hit by Section 3(k). It is important that merely because a computer program is combined with hardware will not get it out of the purview of Section 3(k).

What if the computer related invention proves to have some technical effect: court’s view

Hon’ble Delhi High Court in Telefonaktiebolaget Lm Ericsson … vs. Intex Technologies where a suit was filed by Ericsson against Intex for infringing its standard essential Patent, Intex claimed protect as per Section 3(k). Here court held that prima facie it can be understood that any invention which has any technical effect or can prove technical contribution are patentable in India.

Court here was of a view that even the standpoint of various experts from different jurisdiction clearly suggest that India should not follow the route of computer related Inventions being completely out of scope of Patent. The court went into details of various cases such as VICOM casewhich appreciated the difference between technical processes and mathematical methods.

Furthermore, in HTC V. Apple this reiterated the test in VICOM system i.e., the Technical contribution test.

In Alice Corp v CLS Bank International, court held that patents cannot just be given to an abstract idea for the sole reason that it was done on computer, but if it induces technical functioning or improvement in performance of computer than there must not be any restrictions on its patentability.

Analysis of Ferid Allani v Union of India And Ors

FACTS:

Ferid Allani, a Tunisian Citizen had an idea and he filed a provisional patent application for the same in France on 30.12.1999, with number 99/16704. Thereafter, a PCT application was filed on 29.12.

Ferid Allani wanted to seek the 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.

Method claims	Device claims
Method claims are the active steps which are undertaken to achieve the desired result, i.e., through following steps or “containing steps thereof” would produce the desired outcome.	A Device claim mainly focuses on what the Device is and not on what it does or what result will it produce. It provides insights on active components of a device.

UNDERSTANDING THE PROCESS

HOW THE EVENTS UNFOLDED 

Date	Events
21st February, 2005	The preliminary report by the Patent Officer, objected as to lack of newness and patentability under Section 2(1) (j) and Section 3 (k) of the Act.
21st September, 2005	Another report was issued after a more detailed examination after Amendments in claims made to application by the Petitioner, will was still in ambit of Section 3(k) of the Act. The order was challenged before the court.
25th February, 2008	Single judge of the Court, remanded the matter back to Patent Officer stating that he must give reasons for Rejecting the Application. In four week time petitioner can submit reply to the objection in written as well as oral manner, only after which he should pass the necessary orders.
18th November, 2008	Rejecting the application again, patent officer with a detailed reasoning concluded that: Claims 1-8, being computer inventions were falling under Section 3(k) of the Act. Claims 9-14 lacks novelty and there were no inventive steps as per Section 2(1) (j) of the Act.
20th February, 2009	In Appeal before Intellectual Property Appellate Board (IPAB), the Petitioner’s objection to the impugned order was rejected on the ground of no disclosure as to Technical advancement or effect.
19th December, 2013	The Petitioner filed Appeal before Hon’ble Delhi High Court challenging the orders of controller and IPAB.

ISSUES BEFORE THE HON’BLE COURT

1. • Whether patent application should be granted under Section 2(1)(ja) of the Act
   • Whether the patent application falls under the ambit of Section 3(k) of the Act?

CONTENTIONS:

The petitioner during the course of proceedings contended that Section 3(k) restricts computer programs per se, but the claim by the petitioner for patent is for invention which reduces the time and is more efficient and easier to use. The invention provides an improvement, a technical effect and hence cannot be denied patent in on basis of Section 3(k) of the Act.

Petitioner here relied on various pointers of patent specification and CRI guidelines issued which provide for technical effect and that the patent application discloses the same. Petitioner contented that Section 3(k) must be construed in the light of CRI guidelines and not in mere sense of Act.

Respondent contented that the Hon’ble High Court lacks Jurisdiction to hear the present matter under Article 227 of the Constitution. The respondent relied on alternative remedy doctrine, and since IPAB being technical Tribunal has already decided upon the matter looking at its technical aspect, the court need not to consider the arguments advanced by the Petitioner.

FINDINGS OF THE HON’BLE COURT

The Court considering the submissions on behalf of the petitioner had the following findings:

1. The Court accepted the submission that the Section 3(k) and appreciated its legislative history and that the Section must be read completely along with CRI guidelines for its better implementation. CRI guidelines were formed to facilitate and make the rigid law flexible for patenting of computer-related inventions.
2. The court held that with insertion of ‘per se’ in Section 3(k), which was inserted so that novel and genuine inventions are not rejected for patents, it is only the computer program and not the ancillary inventions that are not Patentable under the Section. Merely because an invention is Computer based will simply not make it non patentable. The legal position of India is same as European Union (Article 52, European patent convention) in this regard.
3. Court went into the contribution and importance of computer related inventions and held that it would be a blockage in realising the aim of the Act if such inventions are out rightly ruled out and will be retrograde to efforts of inventor considering role of computer programs in modern inventions today, where hardly any Invention is not in the sphere of Computers.
4. Court was of a view that since the new IPAB guidelines were introduced after the order of Tribunal, it would be only justified that the application must be seen in the light of guidelines namely:

• 2013, Draft guidelines
• 2016, Guidelines
• 2017, Revised guidelines

1. Since the draft guidelines, gave an insight on the concept of ‘technical effect’, which is borrowed from the ‘technical contribution test’ widely recognised in US and UK. ‘Technical effect’ has been made clear time and again by judicial precedents and this Patent application deserved to be considered in the context of those judicial precedents which have interpreted Section 3(k) in whole different light.
2. The court re-directed the application to the Patent office to be reconsidered on the merits of Case and the observations made by the Court as to Technical effect of the claims.

Final outcome of the case

Finally after a 19 year long legal battle, Ferid Allani was granted patent by IPAB in its order dated 20th July, 2020 after an appeal was preferred to it when Patent office again refused to grant Patent and rejected application on the same grounds on 7th February, 2020.

Importance of the order

The order of the Court in the present case was a milestone in re-iterating the already settled but much less followed proposition. The order makes it clear that there is no absolute bar on granting Patent for computer related invention and hence gave a new direction to the approach of patent office when they encounter new application for claims of computer related invention in future. 

It was high time to change the outlook of the patent office which rejects and follows a rather callous approach towards computer related inventions clubbing them all under the umbrella of Section 3(k). The ‘technical effect’ ought to be given more prominence in deciding such matter which will incentivise inventions in this sphere. 

Lacunas in the reasoning of order 

The decision by Hon’ble Delhi High Court was a crucial one, but certainly there were some lacunas in the reasoning of court, which needed to be addressed which could have bridged the gap and provided more lucidity.

1. Conundrum of Section 3(k) and Section 2(1)(ja): The court did not intricately shed light on Section 3(k) and 2(1)(ja). It would have been of immense importance to clarify the scope of Section 3(k) and how wide its umbrella is and also more focus on what constitutes an ‘inventive step’ as per Section 2(1)(ja) and necessary ingredients to have a better understanding of it. The court simply decided that Section 3(k) must be read in light of CRI guidelines.
2. Ill defined jargons-The court focused on ‘technical effect’ or ‘technical contribution’ and how it is an invincible part of Computer related inventions without clearly defining the jargon and more clarity on same would have been a progressive and illuminating step.
3. Inadequate reasoning-The petition was redirected to patent office without providing for any definitive Reasoning or answering ‘why’. It merely stated that 2016 guidelines must be read and given way while dealing with provisions of the Act. This would have a cascading effect on other applications which were rejected and were not dealt with on light of 2016 and 2017 guidelines. It would be deviant to follow this reasoning which would make all such petition competent to be reconsidered.
4. Short-term solution-Defining ‘technical advancement’ would have been the crux of present case. The order however helped only a little, merely as a ‘case by case’ analysis, without elaborating the term which would have elucidated on patentability of Computer related inventions.
5. Opened Floodgate of rejected claims-Lastly, like in the present case an opportunity was given to re-examine the application which was rejected prior to CRI guidelines, if new guidelines are introduced in the future, this will establish a dangerous precedent and open doors for re-examination of applications which were rejected prior to these guidelines.

Conclusion

It is impossible to imagine today’s world without computers. This is beyond imagination, how world would have been without the invention of computers to facilitate human in their quest for knowledge.

Similarly it is almost impossible to imagine a world without them; it is nearly the same to find technological innovations without the use of software in them. Ferid Allani’s order is a new ray of hope in the world of patents in India.

The order reinforces the well-settled preposition and revising the standard for adjudicating upon Computer related inventions, based on which any invention which has ‘technical effect’ or result in technical advancement or contribution cannot just be equated with a computer program, even if it might be implemented using one.

This order will help to boost up the confidence of inventors to invest in India seeing a more favourable Patent regime in India. The Court followed on the steps of Jurisdictions around the world that focuses on ‘contribution test’ and ‘technical advancement’ for patentability of an Invention even though it is based on a Computer program.

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