Computer program that makes “technical contribution” patentable, unaffected by Section 3 (k) of the Patent Act, Delhi HC


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The Delhi High Court reiterated that not all computer programs are hit by the bar under Article 3 (k) of Patent Law for example, when such programs demonstrate a “technical effect” or a “technical contribution”, they are patentable.

The assertion was made by a Single Judge Chamber Prathiba M Singh in an appeal against an order made by the Intellectual Property Appeal Board (IPAB).

The applicant, who was a Tunisian citizen, had filed a patent application seeking the issuance of a patent for a “method and device for accessing information sources and services on the web”.

The patent claims consisted of both method claims and device claims.

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

The complainant’s appeal to the IPAB was also dismissed. The IPAB considered that the patent application did not disclose any “technical effect” or “technical progress”.

Damaged by the rejection, the applicant appealed to the High Court.

The petitioner argued that the rejection of the patent application was incorrect because the requested patent did not relate to simple software that simply had to be loaded onto a computer.

It was argued that its patent application disclosed an invention which offered more efficient database search strategies, more economical use of memory or higher speed, etc. relevant law and directives.

By contrast, IPAB argued that the present case did not call for any interference under Article 227 insofar as the IPAB had already ruled on the case and the Court, in its judicial competence, could not reassess the technical arguments raised before the Court.

After hearing the parties, the Court noted that computer-related inventions were governed by the following guidelines:

I. Draft Guidelines for the Examination of Computer-Related Inventions, 2013

ii. Guidelines for the Examination of Computer-Related Inventions, 2016

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

Regarding Article 3 (k), the Court stated that the prohibition on patenting relates to “”computer programs in themselves …. ‘ and not on all inventions based on computer programs.

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

In today’s digital world, when most inventions are based on computer programs, it would be backward to claim that not all of these inventions are patentable. Innovation in artificial intelligence, blockchain technologies and other digital products would be based on computer programs, but these would not become unpatentable inventions – just for this reason. It is rare to see a product that is not based on a computer program. Whether it’s cars and other automobiles, microwave ovens, washing machines, refrigerators, they all contain some kind of built-in computer programs. Thus, the effect that such programs produce, including in digital and electronic products, is crucial in determining the patentability test.

Patent applications in these areas should be examined to see if they result in a “technical contribution”, he added.

Elaborating further on the use of the term “per se” in Section 3 (k), the Court stated:

The words “per se” have been incorporated to ensure that genuine inventions developed on the basis of computer programs are not denied patents.

The Court further stated that the meaning of “technical effect” was no longer in dispute due to developments in judicial precedents and the practices of patent offices internationally and in India.

The Court therefore considered it appropriate to order the Patent Office to re-examine the Applicant’s request in the light of the observations made in this Order, judicial precedents, established practices of patent offices as well as the Invention Guidelines. IT-related.

In accordance with the Court’s instruction, a decision is taken on the applicant’s request within two months of having granted him a hearing.

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

Center was represented by a permanent lawyer Akshay Makhija with Roshni Namboodiry.

Read the judgment:

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Gordon K. Morehouse