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India- Novel hardware is not a pre-requisite for the patentability computer-related inventions

In recent years, the Delhi High Court has issued several significant decisions in which it has adopted a positive interpretation of the law. One of the said decisions entails the Court’s recent interpretation of Section 3(k) of the Patents Act, 1970 (as amended) (the ‘Act’). The Court in Raytheon Company (the ‘Appellant’) v. Controller General of Patents and Designs (the ‘Respondent’), overturned a decision issued by the Respondent in which a patent was refused in relation to the Appellant’s invention on the basis of Section 3(k) of the Act, which stipulates that mathematical or business methods, or computer programmes per se, or algorithms are not patentable inventions.

Factual matrix:

An Appeal was filed by the Appellant seeking inter alia an order to set aside the decision of the Respondent. The Respondent had refused an application for a patent titled “Scheduling in a High- Performance Computing System” bearing number 4075/DELNP/2007 on the ground of lack of inventive step and non-patentability under Section 3(k) of the Act.

Appellant’s position:

The Appellant argued that the Respondent has committed a fundamental error by applying the ‘outdated’ Computer Related Invention Guidelines 2016, instead of the ‘updated’ Computer-related Invention Guidelines 2017. The Appellant also argued that the Respondent erroneously rejected the patent application, without considering the substantive arguments against the objection of lack of inventive step. They asserted that the prior art documents cited by the Controller did not disclose the features of the independent claim. The Appellant also argued that the claims of the application provide a technical advancement as well as a technical contribution.

Respondent’s position:

The Respondent argued that the patent application predominantly consists of software, rather than novel hardware. Consequently, they asserted that it falls outside the scope of patentability, pursuant to Section 3(k) of the Act.

Court’s decision:

The Court disagreed with the Indian Patent Office (i.e., the Respondent). The Court reiterated its findings in the precedent decisions, including the Ferid Allani case, and the Microsoft Technology Licensing case, in which it was held that with respect to computer-related inventions, the crucial factor which ought to be assessed, is the ‘technical contribution’ or the ‘effect generated’ by the invention. Accordingly, the Court held that there is no legal basis for the requirement of including novel hardware features in the claims. The Court also highlighted that the 2017 guidelines, which were in effect during the prosecution stage of the subject application, do not impose the aforesaid requirement; rather, the said guidelines stipulate that the examination of computer-related inventions should focus on the essence of the claims rather than their form or presentation. Consequently, the Court struck-down the Respondent’s  decision, and directed the Respondent to re-examine the application, in light of the said principles and guidelines.