The Single Bench of the Delhi High Court in the case of Microsoft Technology Licensing, LLC vs The Assistant Controller of Patents And Designs consisting of Justice Sanjeev Narula held that just because an invention involves computer programs and algorithms, it shouldn't automatically be considered a computer program. Instead, it should be evaluated based on its technical advancements and practical usefulness in solving real-world problems.
Facts:
This appeal was focused on the controversy surrounding the interpretation of the phrase “computer program per se” in the exclusionary Section 3(k) of the Patent Act, 1970 (“the Act”).
Microsoft Technology Licensing, LLC (“Microsoft”) filed a patent application in India in 2003 for a method of authenticating users for sub-locations of a network location (interchangeably “claimed invention” or “subject patent”). The Indian Patent Office issued a report in 2016 and a hearing notice in 2019 raising objections to the patent application. Microsoft submitted written arguments, but the patent office rejected the application in April 2019, citing non-patentability u/s 3(k) of the Act and other unmet requirements.
Contentions Made:
Appellant: The Patent Office wrongly interpreted Section 3(k) of the Act by concluding that the claims relate to an algorithm implemented by a computer program per se. The legislature intended to reject the grant of patent protection to computer programs as such, but not to prevent patents to computer programs altogether. The subject patent provided an improved security solution for computer networks and should be granted a patent. Patent Office has disregarded the decisions of this Court in Ferid Allani v. Union of India & Ors. and Telefonaktiebolaget LM Ericsson (PUBL) v. Intex Technologies (India) Ltd. The claims relate to a technical process that solves a technical problem and provides a technical solution relating to data security. The contribution of the invention lies in the combination of the software with hardware components, not solely in the excluded subject matter. The decision of UK courts in similar cases is relied upon. Reliance was placed on the decision of the UK Chancery Division (Patents Court) in AT &T Knowledge Ventures, LP’s Patent Application, UK Court of Appeals in HTC Europe Co. Ltd. v. Apple Inc., and Aerotel Ltd. v. Telco Holdings Ltd.
Respondent: The order under question was justified as the patent in question was rejected correctly according to Section 3(k) of the Act. The invention was only an algorithm, which is a set of rules that solve a problem. As the set of instructions was being executed on a computer program and not an actual invention, it was deemed non-patentable. The patent deals with improving the user interface to make it more efficient and user-friendly, and it doesn't have any impact on the technical aspects of the hardware or computer system.
Observations of the Court:
To evaluate patent eligibility and for a clear understanding of the term “computer program per se”, the Bench deemed it appropriate to first discuss the subject patent, its technical features and technical application. It observed that if a computer program is combined with hardware or results in a technical outcome, it could be eligible for a patent.
The court in Ferid Allani discussed and noted the guidelines issued by the Patent Office for the examination of Computer Related Inventions (“CRIs”) in 2013. It discussed the legislative history of Section 3(k) of the Act and found that the addition of “per se” was intended to clarify that genuine inventions based on computer programs should not be denied patents. They emphasized the importance of considering the “technical effect” and “technical advancement” when determining the patentability of CRIs.
It opined that when considering patent applications for computer-based inventions, it is important to consider legal precedents, guidelines for computer-related inventions, and the legislative framework. If the invention provides a technical benefit or solves a technical problem, it may still be eligible for patent protection, even if it involves mathematical or computer-based methods. In other words, a computer program patent may be granted if it results in technical advancement and solves a technical problem, improving the underlying software.
Regarding the importance of signposts for evaluation of ‘technical contribution’ and ‘technical effect’, it noted that the Patent Office/ CGPDTM (Office of Controller General of Patents, Designs and Trade Marks) should also frame signposts to provide a well-established and structured framework for assessing the patentability of CRIs.
It further opined that the Controller’s approach to rejecting a patent application was misguided because they only considered whether the invention involved computer algorithms and instructions. However, just because an invention involves algorithms executed on the computer does not mean it lacks a technical effect or contribution. If the invention provides a technical solution to a problem and improves the computer system's functionality, it cannot be rejected solely as a “computer program per se”. A mathematical method or computer program can be utilized in a technical process that involves technical means, like a computer with hardware or a properly configured general-purpose computer. The invention focuses on improving computer and network technology rather than just the user interface. The Controller failed to recognize the technical nature and advancements of the invention by only considering the implementation through computer instructions and algorithms. The invention offers a unique solution to a security problem related to user authentication in accessing sub-locations within a network location. It not only provides a two-tier authentication process but also enhances the user experience, which is crucial in the field of computer networks.
Judgment:
The Bench set aside the previous order on Section 3(k) of the Act and found that the subject patent passes the first step. However, since there was no discussion on other requirements and the order was passed solely based on non-patentability under Section 3(k), the matter was remanded back to the Controller for further action. The Patent Office shall re-examine Microsoft’s patent application on objections regarding lack of novelty and inventive steps in view of other prior arts. The decision on the subject patent shall be taken within one month, after granting a hearing to Microsoft.
While parting with this judgment, it also opined that the Indian Patent Office needs to change the way it evaluates computer-related inventions (CRIs) by considering their technological advancements and practical applications instead of just focusing on the use of algorithms and computer-executable instructions. An invention should not be labelled as a computer program simply because it uses these elements, but should instead be evaluated based on its ability to solve real-world problems. A more thorough evaluation process is necessary to ensure that worthy inventions receive the appropriate patent protection.
Case: Microsoft Technology Licensing, LLC vs The Assistant Controller of Patents and Designs
Citation: C.A.(COMM.IPD-PAT) 29/2022
Bench: Hon’ble Mr. Justice Sanjeev Narula
For the Appellant: Ms. Vindhya S. Mani, Mr. Gursimran Singh Narula and Ms. Vaishali Joshi, Adv.
For the Respondent: Mr. Harish Vaidyanathan Shankar, Central Government Standing Counsel with Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat and Mr. Alexander Mathai Paikaday, Adv. with Mr. Santosh Kumar Gupta and Ms. Shraddha Turkar, Controllers at the Indian Patent Office. Mr. Rajiv Choudhary, Adv. Amicus Curiae.
Read Judgment @LatestLaws.com
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