Del HC | ‘Technical contribution’ is the test of patentability for computer programs; law on S. 3(k) of Patents Act clarified

Delhi High Court: Pratibha Singh, J., allowed a writ petition filed against the order of Intellectual Property Appellate Board (“IPAB”) whereby it had confirmed the order of the Patent Office rejecting the patent application filed by the petitioner.

The petitioner sought a grant of a patent for a “method and device for accessing information sources and services on the web”. The Patent Office rejected the petitioner’s patent application concluding, inter alia, that the claims in the application were hit by Section 3(k) of the Patent Act, 1970. Appeal by the petitioner against this order was dismissed by the IPAB. Aggrieved thereby, the petitioner approached the High Court.

Pravin Anand, Sharwan Chopra and Vibhav Mithal, Advocates representing the petitioner, contended that any patent application which discloses an invention which would allow the user more efficient database search strategies more economical use of memory or higher speed, etc., would constitute “technical effect” and thus the rejection of the patent is not in accordance with law. Per contra, Akshay Makhija, Central Government Standing Counsel, opposed the instant petition.

Notably, Section 3(k) states, inter alia, that a computer program per se is not an invention within the meaning of the Patents Act.

Perusing Section 3(k) along with the Guidelines in respect to Computer Related Invention available on the Patent Office website, the High Court observed:

“Section 3(k) has a long legislative history and various judicial decisions have also interpreted this provision. The bar on patenting is in respect of `computer programs per se….’ and not all inventions based on computer programs. 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 non- patentable inventions – simply for that reason. It is rare to see a product that 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?

Further, it was noted that the words per se were incorporated in Section 3(k):

“…to ensure that genuine inventions which are developed, based on computer programs are not refused patents.”

Accordingly, the High Court directed the Patent Office to re-examine the petitioner’s patent application in light of the observations aforementioned. [Ferid Allani v. Union of India, 2019 SCC OnLine Del 11867, decided on 12-12-2019]

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