Quick on the heels of Ab Intio decision where the Madra High Court ruled that use of algorithms and computer programmes with technical contribution is patentable, the Court once again looked into the patent eligibility of computer related invention under Section 3(k) in an appeal filed by Trans Union, LLC against rejection of patent application 4268/CHE/2012 pertaining to the invention titled ‘System and Method for Matching of Database Records Based on Similarities to Search Queries’. It is interesting to note that the respondent Controller found the application patentable under Section 2(1)(j). The only question the Court was required answer was whether the claimed invention fell under Section 3(k) or not. Another question before the Court was the width of the claim as compared to the enabling description. In this case, the Court adopted the interpretation of Section 3(k) under its ruling in Ab initio earlier and noted that
“ 9. I had discussed the interpretation of Section 3(k) of the Patents Act in considerable detail in Ab Initio Technology LLC. v. The Controller of Patents & Designs, (T) CMA (PT) 58 of 2023, judgment dated 04.11.2025 after considering precedents from the UK, the EPO and India. Reference may be made to paragraphs 21 to 48 thereof, which may be read as part and parcel of this judgment. “
The Court concluded that the patent application would pass through the exemption filter “per se” under Section 3(k) if one or more features therein make a technical contribution and thereby augment the functioning of the computer or the device in which the computer programme(s) are embedded.
Case of the Appellant
Explaining the working of the invention, the appellant submitted that the subject invention relates to a system and method for the matching of database records based on the similarity between fields in the database records and fields in the search queries. According to the appellant, traditional algorithms used to retrieve consumer data from consumer databases are unsuitable for emerging markets due to a lack of relevant records with unique identification numbers, varying address formats, unreliable dates of birth, and the return of a large number of search results. The contribution of the invention is towards addressing this lacuna. The subject application provides an improved system and method that accurately returns matching records from a database and accounts for the formatting and quality issues with consumer data.
The appellant contended that that the claimed invention makes the technical contribution of providing for a system and method that is designed to screen a set of retrieved records from a consumer database based on the names and/or initials in the records; keep or reject the retrieved records based on the matching strength of the records as compared to a search query; and potentially merge the records based on similarity between the kept records in a functionally efficient way thereby making it patent eligible.
The appellant also pointed out that the respondent Controller’s refusal order suffer from contradictions and internal inconsistencies as in one paragraph, it is recorded that the claimed invention admittedly does not relate to a mathematical method or a computer programme and that it is objected to under the category of algorithms; whereas, later, it is recorded that “the search query optimisation algorithm is computer program per se”. The Appellant pleaded that the claimed invention could not be rejected as a ‘computer programme per se’ merely because it contains algorithms or computer executable instructions, and it must be assessed for its technical contribution or effect. They placed reliance on the ruling of Lava International Limited vs Telefonaktiebolaget LM Ericsson [2024: DHC: 2698] for this purpose.
Respondent Controller’s Reply
The respondent Controller admitted that the invention was patentable under Section 2(1)(j). The respondent Controller maintained that the claimed invention involveed methods/systems for matching of database records based on similarity between fields in the records and those in the search queries that are implemented using a source program, executable program, script or any other entity comprising a set of instructions to be performed, as described in paragraphs [0007] and [00033] of the complete specification. Therefore, it was contended that the claimed invention was no more than an algorithm or computer programme per se.
Court’s Analysis and Findings
The Court looked at the impugned order of the respondent and found that the subject application was rejected on the sole ground that in the absence of structural features, the claimed invention was a computer programme per se in the form of a software and, therefore, fell under the exclusions ‘computer programme per se’ and ‘algorithm’, respectively, under Section 3(k) of the Patents Act. As in the Ab Intio case, the Court, in this case, also looked into the complete specification and claims to ascertain the nature of the of the invention through its working mechanism and found that although the claimed invention was aimed at data retrieval of cognitive information, i.e., credit risk of consumers, which was non-technical in nature, such data retrieval was achieved by a method using technical means involving:
- normalising raw data in the database records;
- converting search queries into standardised and structured formats;
- screening the plurality of database records to find the matching record to the search queries;
- discarding the unrelated subset;
- assigning matching strength points;
- and returning the sole/merged record(s) to the applicant.
The above narration, along with the figures, shows that the claimed invention involves a sophisticated series of steps.
The Court observed that it could not be equated with the job of a librarian performed through a computer, as held in T0309/10, where information archival and retrieval were accomplished through a simple normalisation process by assigning a parent identifier and storing and retrieving the relevant document. Therefore, the reasoning adopted by the EPO Board in T0309/10 could not be applied in this case.
The Court concluded that “the claimed method, which is implemented via a processor, search and matching engines that aid in the technical process. Involving assigning matching strength points based on similarity between the normalized search query and data base record and returning the desired records to the user. Such method is based on technical considerations and cannot be characterized as being solely non-technical, i.e. linguistic, semantic or otherwise.”
Court’s Decision
On Section 3(k)
The Court ruled that the claimed invention could not be said to fall under the categories of ‘computer programme per se’ or algorithm under Section 3(k) of the Patents Act. Instead, it involved technical considerations, was achieved by technical means, and was implemented on a computer, using hardware such as a processor and search engines. Upon concluding that Section 3(k) is not an impediment, the Court concluded that the impugned order could not be sustained, and it was set aside, meaning that a patent shall be granted in this case.
On the Limit of Width of Claims
The Court, however, remanded the case back to the Controller, finding that the claims, as drafted, were wide and not limited to the use of specific software (although there are indications, for instance, in paragraph [00033]), or to a particular normalisation or matching process. The Court also found that it was not possible to identify the specific normalisation or matching process from the complete specification. The Court observed that, if granted as claimed, the scope of the monopoly would extend to any method of normalising, matching, and retrieving database records based on the similarities of search queries. To limit the scope of the claims, the Court remanded the case to the respondent Controller for the limited purpose of narrowing the claims by providing greater specificity.
On Remand
The Court directed that the matter be remanded for reconsideration on the limited aspect of the scope of the claims and the enablement thereof. The Court directed that any amendments to the complete specification and/or claims to the extent necessary for this limited purpose shall be permitted.
Takeaways
This case once again strengthens the requirement of ascertaining the presence of technical effect or technical contribution of the inventions involving the use of algorithms and computer programmes before applying the provisions of Section 3(k). As in AB initio, in this case, the presence of technical considerations, achieved by technical means, and implemented on a computer involving hardware such as a processor and search engines, can be a clinching element in securing such patents in India as well. This case will add new meaning to the interpretation of Section 3(k) for the Patent Office to follow.
Author: DPS Parmar
First Published by: Mondaq here