A computer program which makes 'technical contribution' patentable, not hit by Sec 3(k) of Patents Act

The Delhi High Court has iterated that not all computer programs are hit by the bar under Section 3(k) of the Patents Act as when such programs demonstrate a 'technical effect' or a 'technical contribution', they are patentable.

The averment was made by a Single Judge Bench of Justice Prathiba M Singh while dealing with a challenge against an order passed by the Intellectual Property Appellate Board (IPAB).

The Petitioner, who was a citizen of Tunisia, had filed a patent application 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.

The application was rejected by the Patent Office on the ground that while eight claims were hit by Section 3(k) of the Patent Act, the other claims lacked novelty.

The Petitioner’s appeal before the IPAB was also dismissed. IPAB opined that the patent application did not disclose any 'technical effect' or 'technical advancement'.

Aggrieved by the rejection, the Petitioner moved the High Court.

The Petitioner argued that the rejection of the patent application was incorrect as the patent being sought was not for a mere software which was to be simply loaded on to a computer.

It was argued that his patent application disclosed an invention which afforded more efficient database search strategies, more economical use of memory or higher speed, etc. This, it was argued, constituted “technical effect” which made the rejection of the patent in contravention to the law and the relevant guidelines.

On the other hand, the IPAB submitted that the present case did not call for any interference under Article 227 inasmuch as the IPAB had already taken a view in the matter and the Court, in its writ juridiction, could not re-appreciate the technical arguments raised before the Tribunal.

After hearing the parties, the Court noted that Computer Related Inventions were dealt with by the following guidelines:

i. Draft Guidelines for Examination of Computer Related Inventions, 2013

ii. Guidelines for Examination of Computer Related Inventions, 2016

iii. Revised Guidelines for Examination of Computer Related Inventions, 2017

As far as Section 3(k) was concerned, the Court stated that the bar on patenting was in respect of `computer programs per se….’ and not on all inventions which were based on computer programs.

Remarking that it was the effect of the computer programs which constituted the test of patentability, the Court observed,

“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.”

Patent applications in these fields would have to be examined to see if they result in a “technical contribution”, it added.

Further elaborating on the usage of the term ‘per se’ in Section 3(k), the Court said,

“The words ‘per se’ were incorporated so as to ensure that genuine inventions which are developed, based on computer programs are not refused patents.”

The Court further stated that the meaning of 'technical effect' was no longer in dispute owing to the development of judicial precedents and patent office practices internationally and in India.

The Court, therefore, deemed it appropriate to direct the Patent Office to re-examine the Petitioner's application in the light of the observations made in the present order, the judicial precedents, settled practices of patent offices as well as the Guidelines on Computer Related Inventions.

As per the Court's direction, the a decision on the petitioner's application shall be taken within a period of two months, after granting a hearing to him.

The petitioner was represented by Advocates Pravin Anand, Shrawan Chopra, Vibhav Mithal.

Centre was represented by Standing Counsel Akshay Makhija with Roshni Namboodiry.

Read the Judgement: