Delhi High Court holds software based inventions are patentable on demonstrating technical effect

The Delhi High Court has reiterated that the computer-related inventions demonstrating ‘technical effect’ or ‘technical contribution’ are patentable even though it may be based on a computer program.The judgment is issued in the case of Ferid Allani vs. Union of India & others (W. P. (C) 7/2014).

The background of the case is that Ferid Allani filed a patent application IN/PCT/2002/705/DEL seeking grant of a patent for his invention titled “a method and device for accessing information sources and services on the web”.The as-filed claim 1 of the application sought protection for a method for accessing information sources and services on the Web, from a communication device connected through a communication network to the Internet network. The method comprises one or more steps of displaying a page of selection among a plurality of selection pages organized within a structure of tree menu and beforehand locally stored within said communication device, each page of selection comprising a set of icons. The method further comprises a step for emitting on the communication network, in response to a selection of an icon in a selection page being currently displayed, the address of a source of information corresponding to said selected icon. The method is characterized in that for each selection page, the set of icons includes one or more icons for directly accessing remote sources of information and one or more selection icons for locally accessing another selection page within the said structure of tree menu, said remote information sources having addresses locally generated during the display and selection steps. Claim 9 sought protection for a corresponding device claim written in means plus function format.

During the course of prosecution, the Applicant stated that the goal of the claimed invention is to provide a method and corresponding device for accessing information sources and services on the web. The claimed invention achieves this objective in a manner that is quicker and easier to use than the methods known at the time of invention. As a result, it provides a technical effect and requires integration with hardware. The technical effect of the claimed invention is achieved by locally implementing preliminary selection steps in pages organized in a tree structure and operating as rolling menus, and by finally emitting on the internet, only a complete address for accessing a well-targeted information source. In this manner, a drastic reduction in mean time duration is observed for accessing searched information. Further, the invention provides users poorly accustomed to computer tools and search engines with efficient guiding to useful information sources and/or to the most frequently consulted information sources.

The patent office eventually refused this application holding that method claims 1-8 are directed towards a computer program per se under Section 3(k) and device claims 9-14 lack novelty and inventive step under Section 2((i)(j). Aggrieved by the patent office decision, the Applicant appealed to the Intellectual Property Appellate Board (IPAB). However, the appeal was turned down on the ground that the application does not disclose any technical effect or technical advancement. Aggrieved by the IPAB decision, the Applicant filed the writ petition before Delhi High Court claiming the underlying invention is more than a mere software that is loaded onto the computer and the application does disclose a technical effect and technical advancement.

After hearing both the parties, the court went on to discuss the legislative history behind Section 3(k), especially the inclusion of words ‘per se’ in Section 3(k) on the recommendation of the Joint Parliamentary Committee. The court also deliberated upon the legal position in the EU which has a similar provision in Article 52 of EPC. Recognizing the role of software in modern-day inventions, the court stated 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 non- patentable inventions – simply for that reason. It is rare to see a product which 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’.”

In the end, the Court held that across the world, patent offices have tested patent applications in this field of innovation, on the fulcrum of ‘technical effect’ and ‘technical contribution’.If any invention demonstrates a ‘technical effect’ or a ‘technical contribution’, it is patentable even though it may be based on a computer program.The court further held that the patent application deserves to be considered in the context of settled judicial precedents which have now laid down the interpretation of Section 3(k), the Guidelines, and other material including the legislative material.Accordingly, the court directed the patent office to re-examine the application giving the applicant an opportunity of being heard and issue a decision within 2 months. Now it will be interesting to see the approach of the patent office in this case.


Delhi High Court holds software based inventions are patentable on
demonstrating technical effect by Joginder Singh