Delhi High Court clarifies that a computer program which has a “technical contribution” is patentable under the Patent Act, 1970


The recent order issued by the Delhi High Court (“the tribunal”) In Ferid Allani v. Union of India and Ors., Has turned out to be a sweeping ruling on case law relating to the patentability of computer programs or otherwise known as Computer Related Inventions (CRIs) in India. The Court, in its Order of 12.12.2019, confirmed that not all IRCs are hit by the patent bar under the provisions of Section 3 (k) of the Indian Patent Act, 1970 (the “Act”), provided that these KPIs demonstrate a technical effect or a technical contribution. Article 3 of the law lists the various elements which are not interpreted as an invention within the meaning of the law and, in particular, article 3 (k) states that: a mathematical or business method or a computer program in itself or algorithms”, Is not patentable under the Act. It is also relevant to note that the Office of the Controller General of Patents, Designs and Trademarks in India published the Guidelines for the Examination of Computer Related Inventions (CRI) in February 2016 and that revised guidelines were subsequently issued. was published in 2017. The provisions of the law and the guidelines issued under it form the basis and the legislative and legal background that deal with the aspect of patentability of IRCs in India.


The Applicant, Ferid Allani, a Tunisian national, filed a motion to challenge the order of the IPAB dated March 25, 2013, by which the IPAB dismissed the appeal filed by the Applicant contesting the order of the Patent Office (“Initial Public Offering”) Of November 18, 2008, confirming the rejection of the Applicant’s patent application. The applicant has applied for a patent, seeking the grant of a patent for a “method and device for accessing information sources and services on the Web”. The Patent Office issued the first examination report setting out objections to the lack of novelty and patentability under Article 2 (1) (j) and Article 3 (k) of the Law. Subsequently, the following examination report indicated that despite the modifications made to the claims by the applicant, the application was still affected by section 3 (k). An appeal to the IPAB was also dismissed on the grounds that the patent application did not disclose any “technical effect” or “technical progress” and therefore could not claim a patent grant under the Act. Based on the above rejections, the petitioner went to the High Court and argued that his patent application was an “invention” within the meaning of the law and that it advanced an effective database search strategy. , more economical use of memory, etc. this constituted “the technical effect” and, therefore, the rejection of the patent by the Patent Office and the IPAB was contrary to the law and the relevant guidelines.

Further, the respondents argued that the Court, in its writ jurisdiction, cannot reconsider the technical arguments, and the IPAB, which is a technical tribunal, has already taken a position on the case on the basis of the technical arguments.


In passing its order, the High Court of Honor noted that the ban on patenting concerned “computer programs as such …”. and not on all inventions based on computer programs. The court further observed that:

“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. Thus, the effect that such programs produce, including in digital and electronic products, is crucial in determining the patentability test.

Accordingly, it stated that patent applications in the area of ​​computer programs should be examined to see whether they lead to any consequences. “Technical contribution”. If the invention demonstrates a “technical effect” or a “technical contribution”, it is patentable even if it is based on a computer program. The court emphasized that the effect produced by computer programs is crucial in determining patentability. In addition, the tribunal considered that the term “technical effect” should be interpreted in accordance with judicial precedents, the provisions relating to pari materia and the practices of patent offices in foreign jurisdictions.

The Court further clarified that the words “per se” have been incorporated into section 3 (k) to ensure that genuine inventions in the field of computer programs are not denied patents.


In this regard, specific reference is made to the views expressed by the Joint Parliamentary Committee during the introduction of the Patents (Amendments) Act 2002 under which the provisions of Article 3 (k) were amended. , whereby it was declared that: In the proposed new clause (k), the words “per se” have been inserted. This change was proposed because sometimes the computer program can include certain other things, auxiliary or developed on it. The intention here is not to reject them for patent grant if they are inventions. However, computer programs as such are not intended to receive a patent. This amendment was proposed to clarify the purpose. “

Thus, on the basis of the above ratio, the Court ordered the Patent Office to re-examine the applicant’s request in light of this Order, various judicial precedents, the practices of the patent offices as well as the Guidelines. on computer-related inventions. It will be interesting to see how the Patent Office continues to review IRC patent applications in India and its effects on open source software lobbyists around the world.


Gordon K. Morehouse