An assessment as to whether the registrability threshold set out in Section 3(k) of the Indian Patents Act, 1970 (the ‘Act’) has been crossed or not, is an essential pre-requisite for the grant of patents in relation to computer related inventions (‘CRI’). The Delhi High Court, in a recent landmark decision (in Microsoft Technology Licensing, LLC (‘Microsoft’; ‘Appellant’) v. The Assistant Controller of Patents and Designs (‘Respondent’), 2023 DHC 3342) has thoroughly examined the legislative history of the said section, including, the statement of objects and reasons to the Patents (Amendment) Act, 2005, the report of the Joint Parliamentary Committee on Patents (Second Amendment) Bill, 1999, parliamentary debates, etc., and succinctly summarized the approach to be adopted by the Indian Patent Office, when assessing the patentability of CRIs.
An Appeal was filed before the High Court, by Microsoft, seeking inter alia an order to set aside the decision of the Controller General of Patents and Designs (the ‘impugned order’) in which the latter had refused an application for a patent titled “METHODS AND SYSTEMS FOR AUTHENTICATION OF A USER FOR SUB-LOCATIONS OF A NETWORK LOCATION” (bearing Application number 1373/DEL/2003) on the ground that the invention fails to cross the threshold of Section 3(k) of the Act.
The Appellant argued that Section 3(k) of the Act has been erroneously interpreted in the impugned order, and that the intent of the legislature to add the words “per se” does not mean that patents in relation to a computer program shall not be granted altogether; rather, the intent was to reject the grant of patent protection to computer programs as such. The Appellant further argued that technical contribution/ effect in the subject patent lies in the improved security of the existing computer and computer networks, and hence, the same ought to be granted a patent.
The Respondent argued that the claimed invention is merely an “algorithm” which, by definition, is a set of rules that have to be followed to solve a problem. The set of instructions are being implemented on a computer program per se, and hence, the subject invention is non-patentable. The invention operates at the user-interface level and enhances user experience/ efficiency and does not have any technical effect/contribution to the hardware/ computer system itself.
Decision of the Court:
The Court highlighted the importance of signposts for the evaluation of ‘technical contribution’ and ‘technical effect’ in relation to CRIs. The Court opined that the Indian Patent Office ought to undertake the task of providing indicators/guidelines to examiners on patent eligibility by citing an exhaustive list of worked cases. The Court held that the Respondent erred in summarily rejecting the application by declaring that it involves a collection of algorithms that execute instructions in a pre-defined sequential way. The Court determined that the invention provides a technical solution to the security issue associated with employing cookies to authenticate users for network sublocations. This technical solution goes beyond the user interface and provides a patentable technical effect and contribution. The impugned order was therefore set set-aside, and the application was remanded back to the Controller for further examination in relation to the remaining thresholds of patentability (which the Controller had not dealt with previously at the time of issuance of the impugned order).