The recent order passed by the Delhi High Court (“the Court”) in the case of Ferid Allani v. Union of India and Ors., proved to be a radical decision on the jurisprudence related to patentability of computer software programs or otherwise known as computer related inventions (CRI’s) in India. The Court vide its order dated 12.12.2019, confirmed that not all CRI’s are hit by the bar on patenting under the provisions of Section 3(k) of the Indian Patents Act, 1970 (the “Act”), provided such CRI’s demonstrate a technical effect or technical contribution. Section 3 of the Act enlists the various matters that are not construed to be an invention within the meaning of the Act and specifically Section 3 (k) states that- “a mathematical or business method or a computer programme per se or algorithms”, is not patentable under the Act. It is also pertinent to note that the Office of the Controller General of Patents, Designs and Trade marks in India had issued the Guidelines for Examination of Computer Related Inventions (CRI’s) in February 2016 and thereafter revised guidelines were also issued in 2017. The aforesaid provisions of the Act and the guidelines issued thereunder form the legislative and the legal basis and background that deals with the aspect of patentability of CRI’s in India.
The Petitioner, Ferid Allani, a National of Tunisia, filed a writ petition challenging the order of the IPAB dated 25th March 2013, by which the IPAB has dismissed the appeal filed by the Petitioner challenging the order of the Patent Office (“IPO”) dated 18th November 2008, confirming the rejection of the patent application filed by the Petitioner. The Petitioner filed a patent application, seeking grant of patent for a "method and device for accessing information sources and services on the web". The Patent Office issued the first examination report stating the objections as to lack of novelty and patentability under Section 2(1)(j) and Section 3 (k) of the Act. Subsequently, the next examination report stated that despite the amendments made in the claims by the Petitioner, the application was still hit by Section 3(k). An appeal before the IPAB was also dismissed on the grounds that the patent application did not disclose any 'technical effect' or 'technical advancement' and hence does not qualify for a grant of patent under the Act. Based on the above rejections, the Petitioner moved the High Court and argued that his patent application was an ‘invention’ within the meaning of the Act and that it advanced an efficient database search strategy, more economical use of memory etc. It was contended that this constituted the “technical effect” and hence the rejection of the patent by the Patent Office and the IPAB was in contravention to the law and the relevant guidelines.
Further, the Respondents contended that Court in its writ jurisdiction cannot re-consider technical arguments, and the IPAB, which is a technical tribunal, has already taken a view in the matter based on the technical arguments.
While passing its order the Hon’ble High Court noted that the bar on patenting was in respect of `computer programs per se….’ and not on all inventions which were 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 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. Thus, the effect that such programs produce including in digital and electronic products is crucial in determining the test of patentability.”
Accordingly, it stated that the patent applications in the field of computer programs would have to be examined in a manner to see if they result in any ‘technical contribution’. If the invention demonstrates a “technical effect‟ or a “technical contribution‟ it is patentable even though it is based on a computer program. The court pointed out that the effect which the computer programs produce is crucial in determining patentability. Further, the court opined that the term “technical effect‟ shall be interpreted according to judicial precedents, pari materia provisions, and practices of patent offices of foreign jurisdictions.
The Court further clarified that the words ‘per se’ were incorporated in Section 3 (k) to ensure that genuine inventions in the field of computer programs are not refused patents.
In this regard, reference is specifically drawn to the views expressed by the Joint Parliamentary Committee while introducing Patents (Amendments) Act, 2002 pursuant to which the provisions of Section 3(k) was amended, whereunder it was stated that: “In the new proposed clause (k) the words ''per se" have been inserted. This change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon. The intention here is not to reject them for grant of patent if they are inventions. However, the computer programmes as such are not intended to be granted patent. This amendment has been proposed to clarify the purpose.”
Thus, based on the above ratio, the Court directed the Patent Office to re-examine the Petitioner's application in the light of the present order, various judicial precedents, practices of patent offices as well as the Guidelines on Computer Related Inventions. It will be interesting to see how the Patent Office continues to examine patent applications made in respect of CRI’s in India and its effect on open source software lobbyists across the globe.