Calcutta High Court
Google Llc (77/2020/Pt /Kol) vs The Controller Of Patents on 6 August, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
OIP-108
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE 2025:CHC-OS:144
(Intellectual Property Rights Division)
IPDPTA/90/2023
GOOGLE LLC (77/2020/PT /KOL)
VS
THE CONTROLLER OF PATENTS
BEFORE:
The Hon'ble JUSTICE RAVI KRISHAN KAPUR
Date : 6 August, 2025.
Appearance:
Mr. VineetRohilla, Adv.
Ms. RajshreeKajaria, Adv.
Mr. Uttam Sharma, Adv.
Ms. VrindaKedia, Adv.
...for the applicant
Mr. Swatarup Banerjee, Adv.
Ms. Rashmi Bothra, Adv.
Mr. TapanBhanja, Adv.
...for the respondent
The Court: This appeal has been filed under section 117A of the
Patents Act, 1970, challenging an order dated 3 July, 2020, passed by the
Assistant Controller of Patents and Designs, whereby Indian Patent
Application No. 2705/KOLNP/2014, titled "A Method for LabellingVisited
Locations Based on Contact Information", has been rejected on the ground
of non- patentability under section 3(k) of the Patents Act, 1970.
Briefly, the invention provides improved location-tracking or location-
aware services through a technical implementation which has the ability to
determine locations visited by use and inter-links relevant location labels
with the locations visited based on the contact information. The invention
also reduces or eliminates disadvantages and problems associated with
"the relation of a geographical position(e.g., a latitude and longitude on the
globe) with a particular location label (e.g., home, work, etc.)".
The application was filed in India on 25 November 2014 and2025:CHC-OS:144
a
request for examination for the said application was filed on 27 November
2014. The First Examination Report was issued on 27 June 2018and a
reply thereto was filed on 24 December 2018. Pursuant to such reply,a
hearing was held on 3 December 2019 andwritten submissions were filed
on 17 January 2020. The respondent sought for further clarification vide
email dated 19 February 2020. Such mail trail continued till 29 February
2020. Subsequently, the impugned order was passed on 3 July 2020.
It is alleged by the appellant that the respondent erred in concluding
that the invention is an "algorithm/computer program"per se and failed to
construe the claims or apply the tests for determining the patentability of
computer related inventions. Despite providing elaborate and extensive
explanations about the technical effect, the respondent has rejected the
same in a cryptic manner. It is further alleged that the claims have been
misconstrued and misinterpreted resulting in flawed reasoning which is
reflected in the impugned order. The appellant also contends that the
invention entails a novel method executed by a computing device which
collects user-specific location history data, determines a visited location,
generates a contact location label based on contact information associated
with the user, associates such label with the location, and outputs the
same. It is contended that the said method goes beyond mere
implementation of a computer program per se, and instead manifests2025:CHC-OS:144
a
technical effect, thereby rendering it patentable. The appellant also submits
that the claimed process involves a practical application of computing
which provides contextual awareness to the location history, thereby
solving a real-world problem through a technological solution. It is also
contended that the claimed method enhances the functionality of the
computing device and cannot be classified as an "abstract idea". The
claimed invention has a technical implementation and a definitive impact
on the user experience through the device of the user. In any event, several
countries have grantedpatent for the invention which has not been taken
into consideration. In support of its contentions, the appellant relies on
FeridAllani v. Union of India, 2019 SCC OnLine Del 11867, Blackberry
Limited v. Controller of Patents and Designs, 2024 SCC OnLine Del 6028 and
Microsoft Technology Licensing, LLC v. Assistant Controller of Patents, 2024
SCC OnLine Del 3239.
On behalf of the respondent it is contended that the subject matter of
the impugned claims is devoid of any technical advancement or hardware
novelty, and is nothing more than a software-implemented business logic
disguised as a method claim. It is also contended that the claimed
invention fails the three-pronged test laid down in the Guidelines for
Examination of Computer Related Inventions (CRI Guidelines): namely, (i)
identifying the actual contribution, (ii) determining whether such
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contribution lies solely in a mathematical method, business method or
algorithm; and (iii) assessing whether the claimed invention demonstrates a
technical effect or involves novel hardware. In addition, all the steps of the
claimed invention are performed within a single computing device and do
not result in any tangible technical outcome beyond normal data
processing. The application has been rejected under section 15 read with
section 3(k) of the Act, inter-alia holding that the subject matter claimed is
directed to a computer program per se and hence, non-patentable. The
claims 1 to 4 fail to define any specific structural or hardware features
which are articulated in terms of the functional steps which, in essence,
amount to algorithmic processing. In any event, the Proof of Right
document submitted in relation to one of the inventors was defective,
thereby rendering the application procedurally infirm.
Section 3(k) of the Act isas follows:
"Section 3. What are not inventions.
The following are not inventions within the meaning of this Act,
(k) a mathematical or business method or a computer
programme per se or algorithms;"
The term per sequalifying "computer program" was introduced by
way of the Patents (Second Amendment Bill) 1999. When recommending
this, the Joint Parliamentary Committee stated the following as the purpose
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of the qualifier :
"In the new proposed clause (k) the words "per se" have been inserted.
This change has been proposed because sometimes the computer
programme may include certain other things, ancillary thereto or
developed thereon. The intention here is not to reject them for grant of
patent if they are inventions. However, the computer programmes as
such are not intended to be granted patent. This amendment has been
proposed to clarify the purpose."[Report of the Joint Committee, The
Patents (Second Amendment) Bill, 1999, Parliament of India,
COMM.91/2001, at p 3.]
The core issue is whether the claimed invention, though expressed as
a method executed by a computing device, constitutes patentable subject
matter in light of the prohibition under section 3(k) of the Act.
The impugned order records as follows:
"As per the claims, "A method for labeling a location visited by a user,
comprising: collecting by a computing device, location history data
associated with a user; determining, by the computing device and
based on the location history data, a location visited by the user;
characterized by: determining, by the computing device, a contact
location label based at least in part on contact information associated
with the user and the location visited by the user; associating, by the
computing device, the location visited by the user with the contact
location label, wherein the contact location label comprises additional
context for the location visited by the user; and outputting, by the
computing device, the contact location label." These functional steps
that started with data, added an algorithm, and ended with a new
form of data [that] was directed to an abstract idea. Further, the steps
of "collecting", "determining", "determining". "associating" and
"outputting" are result-based functional language that does not
sufficiently describe how to achieve these results in a non-abstract
way. All these functions for labeling a location visited by a user are
performed and controlled by a computing device (120), having a
processor programmed with software with memory to store the
location history data (paras[0003]-[0005] and [0020]). There isn't any
data transfer from this single processor to the other blocks.
Further, the claim as a whole is analysed to determine whether any
element, or combination of elements, is sufficient to ensure that the
claim amounts to significantly more than the algorithm/computer
program. This is simply a generic recitation of computing device and a
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processor, performing their basic function of collecting, determining,
associating and outputting according to the protocol. The claim
amounts to no more than collecting a data and outputting the contact
location label. Further, the processor is recited at a high level of
generality and its broadest reasonable interpretation comprises only a
processor to simply perform the generic computer functions of carrying
out the instructions of a computer program. These generic computing
elements alone do not amount to significantly more than the
algorithm/computer program
Therefore, all these steps are combination of different
software/computer program i.e., algorithm performed by the processor.
In claims of the instant alleged invention, computer programs are
claimed in the form of method /system comprising various algorithmic
steps indicating the function of flow charts or process steps. These
programs do not have further technical effect going beyond the
"normal" interactions between the program and the hardware
(processor, storage media, interfaces, a network). Also the problem
solved by the claimed subject-matter is non-technical and related to
administrative and management. Hence these instructions, claimed in
form of different steps, are computer program per se and the subject
matter of claims, though oriented towards method, yet pertains to
algorithm/computer program per se. Hence, subject matter of claims 1-
4 relates to "algorithm/computer program per se" and falls within
scope of section 3(k) of The Patents Act, 1970 (as amended)."
The finding in the impugned order that there is no technical effect as
the steps are performed based on the history which is stored in the memory
of the computing device and the history data which has been processed on
the computer programme does not justify any interference. The absence of
any technical effect in the invention has been comprehensively dealt with in
the impugned order. There is no infirmity nor perversity in the impugned
order which warrants any interference whatsoever.
The subject claims, when construed purposively, reveal that the
entirety of the alleged invention operates through the execution of software
instructions within a conventional computing architecture, without reciting
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any novel technical implementation, hardware integration, or measurable
technical contribution. The specification per selacked articulation of a
technological problem or an improvement in the functioning of the device. A
computer software or program which determines whether data which is
uploaded on a server relates to how information is administered and is
managed in a database on a server is a computer program per se and not
patentable. A technical advancement would mean that such program would
not work in the same way without such advancement coming into effect.
This necessarily involves that something more is needed to circumvent the
exclusion. The purported "technical effect" in the present invention is
limited to contextual labeling based on previously stored data, which falls
within therealm of administrative or management functions. The
expression of functionality through result-oriented language such as
"collecting", "determining", "associating" and "outputting" have been held to
be abstract in nature, without sufficient technical disclosure as to the
manner of implementation. The claimed method lacks any technical effect
or advancement, as the steps are performed within the confines of a generic
computing device and are executed solely through pre-programmed
software routines. The mere automation of such a process, without more,
cannot render the invention patentable.
In this connection, the Guidelines for Examination of Computer
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Related Inventions (CRIs) inter alia provide as follows:
"The sub-section 3(k) excludes mathematical methods or
business methods or computer programme per se or algorithms
from patentability. While the judgment of mathematical methods
or business methods is comparatively easier, it is the computer
programme per se or algorithms related inventions that require
careful consideration of the examiner. Computer programmes are
often claimed in the form of algorithms as method claims or
system claims with some 'means' indicating the functions of flow
charts or process steps. The algorithm related claims are even
wider than the computer programmes claimed by themselves as
a single algorithm can be implemented through different
programmes in different computer languages. If, in substance,
claims in any form such as method/process,
apparatus/system/device, computer program product/
computer readable medium belong to the said excluded
categories, they would not be patentable.
Even when the issue is related to hardware/software relation,
(e.g., when the claims recite 'processor is programmed to... or
'apparatus comprising a processor and configured/ programmed
to.....) the expression of the functionality as a 'method', is judged
on its substance. It is wellestablished that, in patentability
cases, the focus should be on the underlying substance of the
invention, not the particular form in which it is claimed. The
Patents Act clearly excludes computer programmes per se and
the exclusion should not be allowed to be avoided merely by
camouflaging the substance of the claim by wording (e.g.
different subroutines are performed in different physical
locations such as processors will not suffice)."
Further para 5 of the CRI Guidelines is as follows:
"Tests/Indicators to determine Patentability of CRIS:
Examiners may rely on the following three stage test in examining CRI
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applications:
Properly construe the claim and identify the actual contribution; If the
contribution lies only in mathematical method, business method or
algorithm, deny the claim;
If the contribution lies in the field of computer programme, check
whether it is claimed in conjunction with a novel hardware and
proceed to other steps to determine patentability with respect to the
invention. The computer programme in itself is never patentable. If the
contribution lies solely in the computer programme, deny the claim. If
the contribution lies in both the computer programme as well as
hardware, proceed to other steps of patentability."
The language of the Guidelines suggests that one must consider
whether the invention is "technical in nature" involving technical
advancement as compared to the existing knowledge or having economic
significance or both. (Ramanujan's Patent Law at page 552).
To this extent, the decisions relied on by the appellant are
distinguishable and inapposite. In Blackberry Limited v. Controller of
Patents and Designs (Supra), the petitioner was able to demonstrate
technical effects both within and beyond the computer. Similarly, in
Microsoft Technology Licensing, LLC v. Assistant Controller of Patents (Supra),
the petitioner was not only able to demonstrate the improvement in the
functionality of the system but also achieve an innovative technical
advantage which was clearly defined and distinct from ordinary operations
expected of such systems. As such, the claimed inventions in all the cited
decisionswere found to be beyond the purview of section 3(k) of the Act.
In light of the above, there is no infirmity in the order dated 3 July
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2020 which warrants any interference. The impugned order is adequately
reasoned and has considered all the contentions of the appellant. The
appellant has been unable to satisfy the objections raised under section 3(k)
of the Act. In such circumstances, the appeal fails.
IPDPTA 90 of 2023 stands dismissed.
(RAVI KRISHAN KAPUR, J.)
SK.
