Ferid Allani v. Union of India & Others

High Court of Delhi at New Delhi | Decided: 12 December 2019 W.P.(C) No. 7 of 2014 & CM APPL. 40736/2019 Bench: Hon’ble Justice Prathiba M. Singh Citation: 2019 SCC OnLine Del 11867

Background

Ferid Allani, a citizen of Tunisia, filed a patent application bearing No. IN/PCT/2002/00705/DEL through the Patent Cooperation Treaty route, seeking grant of a patent for a “method and device for accessing information sources and services on the web.” The application entered the national phase in India with a filing date of 17 July 2002 and a priority date of 30 December 2000. The claims in the patent application comprised both method claims and device claims.

The first examination report issued by the Patent Office on 21 February 2005 raised objections as to lack of novelty and patentability under Section 2(1)(j) and Section 3(k) of the Patents Act, 1970. A further examination report dated 21 September 2005 maintained that despite amendments made by the petitioner to the claims, the application remained hit by Section 3(k). The petitioner challenged the order dated 21 September 2005 by way of a writ petition before the Delhi High Court. By order dated 25 February 2008, a learned Single Judge directed the Patent Office to give reasons for the rejection and remanded the matter, permitting the petitioner to submit a reply to the objections and directing that the petitioner be given both a written and oral hearing before a fresh order was passed.

Following the remand, the Patent Office again rejected the patent application by a detailed order dated 18 November 2008, concluding that method claims 1 to 8 were hit by Section 3(k) of the Patents Act, 1970 as they constituted a computer program and did not amount to a patentable invention and that claims 9 to 14 lacked novelty and inventive step under Section 2(1)(j) of the Act. The petitioner thereafter filed an appeal before the Intellectual Property Appellate Board challenging the rejection order. The IPAB dismissed the appeal by order dated 25 March 2013, holding that the patent application did not disclose any technical effect or technical advancement. The petitioner then filed the present writ petition W.P.(C) 7/2014 before the Delhi High Court challenging the IPAB order.

Before the High Court, the petitioner’s case was that the complete specification clearly disclosed a technical effect and a technical advancement as of the priority date, that the invention was not a mere software program loaded onto a computer but required a particular method of implementation as evident from the claims and that the rejection was therefore legally unsustainable. The petitioner placed reliance on the Draft Guidelines for Examination of Computer Related Inventions issued by the Indian Patent Office in 2013, which define technical effect as a solution to a technical problem that the invention taken as a whole tends to overcome with examples including higher speed, reduced hard-disk access time, more economical use of memory, more efficient database search strategy, more effective data compression, improved user interface, better control of robotic arm and improved reception or transmission of radio signals and define technical advancement as a contribution to the state of art in any field of technology. It was submitted that any patent application disclosing an invention allowing more efficient database search strategies, more economical use of memory or higher speed would constitute a technical effect and that Section 3(k) ought to be interpreted in the context of the guidelines. The Union of India submitted in response that the matter did not call for any interference under Article 227 of the Constitution inasmuch as the IPAB is a technical tribunal and the court ought not to re-appreciate technical arguments that were raised before it.

Issues for Determination

1. Whether the IPAB’s dismissal of the petitioner’s appeal, upholding the rejection of patent application No. IN/PCT/2002/00705/DEL on the ground that the application was hit by Section 3(k) of the Patents Act, 1970 and did not disclose any technical effect or technical advancement, called for interference by the High Court in exercise of its jurisdiction under Article 226 of the Constitution of India.
2. Whether Section 3(k) of the Patents Act, 1970, which excludes computer programmes per se from patentability, operates as an absolute bar against all computer-implemented inventions or whether the inclusion of the words per se in the provision preserves patentability for inventions based on computer programmes that produce a technical effect or technical contribution.
3. Whether the petitioner’s patent application deserved to be re-examined in light of the guidelines for examination of computer related inventions issued by the Indian Patent Office and the settled judicial precedents on the interpretation of Section 3(k).

Key Holdings of the Court

1. The Court held that the bar on patentability under Section 3(k) of the Patents Act, 1970 applies to computer programmes per se and not to all inventions based on computer programmes. In today’s digital world, where most inventions are based on computer programmes including cars and other automobiles, microwave ovens, washing machines and refrigerators which all have computer programmes built into them it would be retrograde to hold that all such inventions are not patentable simply because they are based on computer programmes. Innovations in the fields of artificial intelligence, blockchain technologies and other digital products would also be based on computer programmes but would not become non-patentable inventions for that reason alone. The effect that programmes produce in digital and electronic products is crucial in determining the test of patentability.
2. The Court held that patent applications in the field of computer related inventions must be examined to determine whether they result in a technical contribution. The addition of the words per se in Section 3(k) was a conscious legislative step. The Report of the Joint Committee on the Patents Second Amendment Bill 1999 expressly recorded that the words per se were inserted to ensure that genuine inventions developed based on computer programmes are not refused patents, while computer programmes as such are not intended to be granted patents. The Court held that this legislative history confirmed that Section 3(k) does not operate as an absolute bar against computer-implemented inventions that produce a technical contribution.
3. The Court held that the legal position in India under Section 3(k) is similar to that under Article 52 of the European Patent Convention, which excludes programmes for computers from patentability only to the extent to which a patent application relates to such subject matter as such. Across the world, patent offices have tested patent applications in the field of computer-implemented inventions on the test of technical effect and technical contribution and if the invention demonstrates a technical effect or technical contribution it is patentable even though it may be based on a computer programme.
4. The Court held that the petitioner’s patent application, which was filed before the issuance of the guidelines for computer related inventions, deserved to be re-examined in light of the settled judicial precedents that have since laid down the interpretation of Section 3(k), the guidelines issued by the Indian Patent Office for examination of computer related inventions and other relevant material including the legislative history. The Court noted that at the time the application was filed and processed, there were no guidelines regulating computer related inventions and three sets of such guidelines have since been published the 2013 Draft Guidelines, the 2016 Guidelines and the 2017 Revised Guidelines.
5. Considering that the term of the patent was ending within approximately one year from the date of the order, the Court directed that the petitioner’s patent application be re-examined within a period of two months, with a hearing granted to the patent applicant before a fresh decision was taken. The writ petition was allowed in these terms.

Statutory Provisions Involved

Section 3(k) of the Patents Act, 1970 provides that a mathematical or business method or a computer programme per se or algorithms shall not be regarded as inventions within the meaning of the Act. The central interpretative question in the present case was the scope and effect of the words per se in this provision. The Court examined the legislative history of Section 3(k), specifically the Report of the Joint Committee on the Patents Second Amendment Bill 1999, which recorded that the words per se were added to the provision to ensure that genuine inventions developed based on computer programmes are not refused patents while computer programmes standing alone are not intended to receive patent protection. The Court held that this legislative intent must inform the examination of computer related inventions and that the technical contribution or technical effect of such inventions is the decisive test.

Section 2(1)(j) of the Patents Act, 1970, which defines invention, was also engaged in this case. The Patent Office had rejected claims 9 to 14 of the application on the ground that they lacked novelty and inventive step under this provision, in addition to the Section 3(k) objection raised in respect of claims 1 to 8. The IPAB upheld the rejection on the broader ground that the application disclosed no technical effect or technical advancement.

Article 52 of the European Patent Convention was referred to by the Court as embodying a similar legal position to Section 3(k), providing that programmes for computers shall not be regarded as inventions only to the extent to which a patent application relates to such subject matter as such. The Court noted that European patent offices test such applications on the standard of technical effect and technical contribution and that Indian law under Section 3(k) operates on a comparable basis.

Article 226 of the Constitution of India was the jurisdictional basis on which the writ petition was filed, invoking the High Court’s supervisory jurisdiction to challenge the IPAB’s order dismissing the appeal against the Patent Office’s rejection. The Court exercised this jurisdiction to set aside the IPAB’s approach and direct fresh examination.

The Draft Guidelines for Examination of Computer Related Inventions 2013, the Guidelines for Examination of Computer Related Inventions 2016 and the Revised Guidelines for Examination of Computer Related Inventions 2017, all issued by the Indian Patent Office, were referred to by the Court as relevant materials to guide the re-examination of the petitioner’s application. These guidelines define technical effect and technical advancement and provide guidance to examiners on the assessment of computer related inventions.

Reasoning of the Court

The Court’s reasoning in this case is contained in a short oral order of eight pages and proceeds through three essential steps.

The first step was to contextualise the legislative history and purpose of Section 3(k). The Court examined the Report of the Joint Committee on the Patents Second Amendment Bill 1999 and found clear legislative confirmation that the words per se were added to Section 3(k) deliberately and for a specific purpose to draw a distinction between computer programmes standing alone, which are not patentable and inventions developed based on computer programmes that produce genuine technical contributions, which are not intended to be excluded from patent protection. The Court observed that the provision must be read in this context and not as a blanket exclusion of all computer-implemented inventions.

The second step was to locate the Indian legal position within the global framework for computer related invention patentability. The Court observed that the Indian position under Section 3(k), read with the words per se, is analogous to Article 52 of the European Patent Convention and that patent offices across the world apply the standard of technical effect and technical contribution in determining whether a computer-implemented invention is patentable. The Court held that this global standard is consistent with the Indian statutory position and must inform the examination of such applications in India.

The third step was to apply these principles to the procedural history of the petitioner’s application and to conclude that the application had not been examined against the correct legal standard. The Court noted that when the application was filed and repeatedly processed by the Patent Office and the IPAB, the guidelines for computer related inventions had not yet been issued. The Court found that the settled judicial precedents, the three sets of CRI guidelines subsequently issued by the Indian Patent Office and the legislative material taken together now provide a clear framework for the examination of such applications. Since the petitioner’s application had not been evaluated against this framework and since the patent term was expiring within approximately one year, the Court directed expedited re-examination within two months with a hearing afforded to the applicant.

The Court did not make any finding on the merits of whether the petitioner’s specific invention was or was not patentable. The order was entirely a remand directing proper re-examination and the substantive question of patentability was left to the Patent Office to determine after applying the correct legal standard.

Doctrinal Significance

The Ferid Allani judgment, though brief in form, is significant in Indian patent jurisprudence for what it authoritatively establishes about the scope and purpose of Section 3(k) of the Patents Act, 1970.

Its primary contribution is the judicial confirmation drawing directly on the legislative history of the provision that Section 3(k) does not operate as an absolute exclusion of all computer-implemented inventions from patentability. The words per se in the provision are not surplusage. They reflect a deliberate legislative choice to permit patentability for genuine inventions developed on the basis of computer programmes provided they produce a technical contribution, while excluding bare computer programmes standing alone. This confirmation is important because it resolves the interpretive ambiguity that had allowed the Patent Office and the IPAB to treat Section 3(k) as a near-absolute bar.

The judgment’s second significant contribution is its alignment of the Indian legal position with the global framework, specifically the European Patent Convention’s Article 52 approach. By holding that the Indian standard under Section 3(k) is comparable to the European approach of excluding computer programmes as such but not computer-implemented inventions producing a technical contribution, the court provided a principled basis for Indian patent examiners to draw upon international examination practices when assessing such applications.

The third significant contribution, noted in the second document you uploaded from the other website, is the subsequent procedural outcome. After the court’s remand, the Patent Office on 7 February 2020 again refused to grant the patent on the same grounds. The petitioner appealed to the IPAB which, on 20 July 2020, granted the patent after a legal process spanning approximately nineteen years from the priority date. This subsequent grant, while not part of the court’s judgment itself, confirms the practical significance of the court’s direction that Section 3(k) must be applied through the lens of technical contribution rather than as a categorical exclusion.

It is important to be precise about what this judgment does not do. It does not lay down a detailed doctrinal framework for the patentability of computer-implemented inventions. It does not endorse the 2017 Revised Guidelines as the definitive statement of the law. It does not make findings on the patentability of artificial intelligence, blockchain or any other specific technology. It does not define technical effect or technical contribution in concrete terms. These limitations are inherent in the nature of the order a short oral judgment directing re-examination rather than a full merits determination and any summary of this case that attributes broader holdings to it goes beyond what the judgment actually decides.

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