The Delhi High Court has offered important insights into the understanding of Section 3(k) of the Indian Patents Act ,1970 (the “Act”) in its decision, Blackberry Limited v. Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 318/2022]Top of Form. The Court has established a significant precedent and has clarified the scope of “technical effects” in relation to computer-related inventions (‘CRIs’).

FACTS

Top of Form

Bottom of Form

Blackberry (the “Appellant”) challenged refusal order issued by the Office of the Controller General of Patents (the ‘Controller’) in relation to their patent application No. 717/DEL/2009 titled “Auto-Selection of Media Files” based on the grounds of non-patentability under Section 3(k) of the Act which stipulates that a mathematical or business method or a computer programme per se or algorithms are not patentable. The Controller (the “Respondent” in the subject appeal before the High Court) had rejected the application on the ground that the claimed invention is essentially a computer program and does not demonstrate the required technical effect or contribution to be considered a patentable invention.

Top of Form
SUBMISSION BEFORE THE COURTBottom of Form

TheArgumenThe Appellant contended that the invention provides a technical solution, i.e., dynamically optimizing the storage and management of media content on user devices, to a technical problem underlying the invention. It was further asserted that the system of the present invention enables efficient synchronization of media files across devices and offers significant improvements in user experience and device capability.

Moreover, relying on the Delhi High Court’s judgment in Ferid Allani v. Union of India [W.P.(C) 7/2014 & CM APPL. 40736/2019] the Appellant emphasized that CRIs with a technical effect are not barred under Section 3(k) of the Act. The Appellant further asserted that features like confidence-level-based categorization and cache management demonstrates a technical contribution beyond a mere algorithm.

On the other hand, the Respondent argued that the claimed invention simply automated routine tasks by employing standard algorithms on general-purpose computers, and therefore Top of Form

Bottom of Form

the invention lacked any technical effect or contribution. The Respondent highlighted that a similar objection was raised during the prosecution of the counterpart EP application as well.

DECISION

The Court clarified that Section 3(k) of the Act does not exclude all CRIs from patentability. Instead, inventions lacking a technical effect or contribution fall within the ambit of Section 3(k) of the Act. The Court noted that “the subject invention along with the law on the subject would show that the invention can by no stretch of imagination be described as merely a computer programme or an algorithm. The same has a technical implementation and a definitive impact on the user experience through the device of the user. It also has an effect on the capability of the device. The subject invention enhances the functionality and the capacity of the device almost in an unlimited manner. It is also enabling autonomous operation of device without any specific intervention by the user.” Therefore, the Court held that “any invention which enhances the capability of a device beyond a mere algorithm or business method is not barred under Section 3(k).” Thus, the appeal was accepted, provided that the refused claims were characterized by essential features that contribute to the technical effect.

Top of Form

Bottom of Form

CONCLUSION

This decision marks a significant step in clarifying the scope of Section 3(k) of the Act and the requirement of technical effect for patent eligibility of CRIs in India. The Court’s ruling marks a shift towards a more inclusive approach to software patents in India, distinguishing between mere algorithms and inventions that enhance device functionality.