Madras High Court
Mr. Prashant Philips vs M/S. The Assistant Controller Of ... on 8 August, 2024
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
(T)CMA(PT)/207/2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 08.08.2024
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)CMA(PT)/207/2023
M/s. Microsoft Technology Licensing, LLC
Earlier Microsoft Corporation (Assignor),
One Microsoft Way,
Redmond, Washington 98052-6399,
United States of America.
Represented by:
Mr. Prashant Philips,
B-6/10, Safdarjung Enclave,
New Delhi. ... Appellant
-vs-
M/s. The Assistant Controller of Patents and Designs,
The Patent Office,
Intellectual Property Office Building,
Plot No. 32, Sector 14, Dwarka,
New Delhi - 110075. ... Respondent
Prayer: Transfer Civil Miscellaneous Appeal (Patents) filed under Section
117-A of the Patents Act, 1970, praying to the Hon'ble Court that (i) The
present appeal be allowed; (ii) The order of the Assistant Controller of
1/11
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(T)CMA(PT)/207/2023
Patents and Designs dated 22.01.2020 in 1196/CHENP/2011 be set aside;
(iii) To hold that claimed invention in the present case is patentable subject
matter, and involves inventive step and (iv) To direct the Controller to grant
the patent.
For Appellant : Ms.Vindhya S. Mani
for M/s.Lakshmikumaran and Sridharan
For Respondent : Mr.C.Samivel, SPC
JUDGMENT
This appeal is directed against an order dated 22.01.2020 rejecting
Indian Patent Application No.1196/CHENP/2011. Such application was
filed in respect of an invention titled as “DOCUMENT LENGTH AS A
STATIC RELEVANCE FEATURE FOR RANKING SEARCH
RESULTS”. Upon request, the First Examination Report (FER) was issued
on 26.10.2018. The appellant responded thereto on 26.04.2019 and
submitted amended claims 1 to 19. Pursuant to a hearing on 11.09.2019, the
appellant filed written submissions on 26.09.2019. The impugned order was
issued in these facts and circumstances.
2. Oral arguments on behalf of the appellant were advanced by
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Ms.Vindhya Mani, learned counsel and on behalf of the respondent by
Mr.C.Samivel, learned SPC.
3. Learned counsel for the appellant invited my attention to the
impugned order and pointed out that the respondent merely extracted from
prior art documents D1 to D3. She further submits that the purported
inventive step analysis is limited to about 1 ½ paragraphs at pages 58 and 59
of the paper book. She also submits that the application was rejected by
relying on Section 3(k) of the Patents Act, 1970 (the Patents Act) on the
ground that the claimed invention did not envisage the use of novel
hardware. By relying on a recent judgment of the Delhi High Court in
Microsoft Technology Licensing, LLC v. Assistant Controller of Patents and
Designs, C.A.(Comm.IPD-PAT) 185/2022 (Microsoft Technology
Licensing), she submits that the Delhi High Court concluded that a computer
related invention may be granted a patent, even if implemented on a general
purpose computer, if it results in a specific and credible technical effect or
enhancement beyond mere general computing processes. In view of the
consistent position taken in this regard both by this Court and the Delhi High
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Court, she contends that the claimed invention could not have been rejected
merely because it is implemented on a general purpose computer. Her last
submission was that the FER and hearing notice did not refer to the claimed
invention as being an algorithm, whereas the impugned order makes such
reference at page 60 of the paper book.
4. In response, Mr.C.Samivel draws reference to the consideration of
claims 1 to 13 at page 60 of the paper book and points out that it was
concluded therein that the claimed invention uses computer algorithms to
carry out some procedure and method steps.
5. Section 3(k) of the Patents Act provides for exclusions in respect of
mathematical or business methods, algorithms or computer programmes per
se. Each exclusion is distinct although these exclusions cannot be
characterised as unrelated. On perusal of the FER, there is reference therein
to method claims 14 and 15 being computer based algorithmic steps.
However, the objection under Section 3(k) is made on the ground that it is a
computer programme per se and, therefore, excluded. The hearing notice
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also raises the objection under Section 3(k) on the ground that the claimed
invention is a computer programme per se. When the impugned order is
examined in this context, it is noticeable that the following conclusion is
recorded therein:
“Moreover, the claimed technical implementation
does not go beyond a generic technical implementation as
such technical considerations must go beyond merely
finding a computer algorithm to carry out some procedure
and the method steps as claimed herein are completed or
done with the help of computer-executable instructions in
form of a pre-defined sequential manner. Hence, all the
above steps are done with the help of computer programs
in terms of an algorithm and performed on a computing
device and it is apparent that the proposed algorithmic
change has no technical motivation and that its
implementation is trivial in form of an algorithm.”
The above extract discloses that the claimed invention was also rejected on
the ground that it is an algorithm without providing a reasonable opportunity
to the petitioner to respond to such objection.
6. In earlier judgments of the Delhi High Court and this Court, it was
concluded that it is not necessary for a computer related invention to be
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embedded or used in relation to novel hardware for it to fall outside the
exclusion under Section 3(k). Paragraph 33 of the recent judgment of the
Delhi High Court in Microsoft Technology Licensing is set out below:
“33. In light of the above discussion, it is clearly
established that in case of an invention involving
computer programmes, to circumvent the limitations
imposed by Section (k) of the Act, a patentee must
demonstrate that the overall method and system disclosed
in the patent application, upon implementation in a
general-purpose computer, must contribute directly to a
specific and credible technical effect or enhancement
beyond mere general computing processes. Therefore, the
inventive contribution of a patent should not only improve
the functionality of the system but also achieve an
innovative technical advantage that is clearly defined and
distinct from ordinary operations expected of such
systems.”
The respondent recorded the following finding in the impugned order:
“It is therefore understood that the actual
contribution of the invention solely lies in computer
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program. The only hardware which is disclosed are
general purpose processor, memory and computing device
that executes the above said computer program per se in a
conventional or normal manner. Further, the above
mentioned computer program do not have technical effect
going beyond the “normal” interactions between the
program and the hardware. Hence, subject matter of
claims 1-13 relates to “computer program per se” and
falls within scope of section 3(k) of the Patents Act, 1970
(as amended).”
The above finding indicates that the application was rejected on the ground
that the hardware is in the form of a general purpose processor, memory and
computing device. Thus, the principles formulated by the Delhi High Court
and this Court in relation to Section 3(k) have not been taken note of while
recording this finding.
7. As regards inventive step analysis, it is noticeable that extracts from
prior arts D1, D2 and D3 have been set out in the impugned order.
Thereafter, the following finding is recorded:
“D2 discloses implementing a relevance analysis in
association with a document length (para [0075]) but it
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does not talks about directly normalizing the document
length but it would have been obvious to person skill in
the art at the time of invention was made to normalized
the document length of D2 and incorporate the normalized
document length analysis into the search results ranking
invention of D1 to produce an expected result of ranking
search results in association with document length. The
modification would be obvious because person skill in the
art would be motivated to produce results in the highest
order of relevance and similarity.
Subject matter of claims 1-13 has been carefully
considered in detail. It is found that technical contribution
lies with respect to claimed subject matter only in use of
normalized document length. From a technical point of
view the length of the ranked document would not appear
to be relevant. The idea to use the documents length as a
ranking feature follows from non-technical information
requirements of the user (e.g., that the user prefers
documents of a certain length over other document),
rather than from any technical considerations). Subject
matter of claims 1-13 relates to a system for providing
information comprising a search component, a database
component and a ranking component. In the present case
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these components are software components installed in
the data processing system that provide the claimed
functionality. ”
While a conclusion has been reached that the modification would be obvious
from prior arts D1 and D2, the respondent has not set out reasons as to why
the claimed invention would be obvious from prior arts D1 and D2. The
settled legal position, in this regard, is that there should be clear pointers
either direct or indirect, in the prior art documents which would lead the
person skilled in the art to the claimed invention. Since the conclusions
recorded in the impugned order are not supported by cogent reasons,
interference therewith is necessary.
8. For reasons set out above, impugned order dated 22.01.2020 is set
aside and the matter is remanded for reconsideration on the following terms:
(i) In order to preclude the possibility of pre-determination, an officer
other than the officer who issued the impugned order shall undertake
reconsideration;
(ii) Upon providing a reasonable opportunity to the appellant, a fresh
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order shall be issued within a period of four months from the date of receipt
of a copy of this order.
9. Therefore, (T)CMA(PT)/207/2023 is disposed of on the above
terms, without any order as to costs.
08.08.2024
Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes / No
kj
To
M/s. The Assistant Controller of Patents and Designs,
The Patent Office,
Intellectual Property Office Building,
Plot No. 32, Sector 14, Dwarka,
New Delhi - 110075.
SENTHILKUMAR RAMAMOORTHY,J
kj
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(T)CMA(PT)/207/2023
(T)CMA(PT)/207/2023
08.08.2024
https://www.mhc.tn.gov.in/judis
