THERE SHOULD BE NO BAR OF SECTION 3(k) – IF A ‘TECHNICAL CONTRIBUTION’ MADE BY A COMPUTER PROGRAM

A new insight was highlighted in a recent judgment by the Delhi High Court (HC) against an order of the IPAB. The Court in its judgements laid down that not all computer programs are hit by the bar under Section 3(k) of the Patents Act in cases when such programs demonstrate a 'technical effect' or a 'technical contribution'. Thus, they would be validly patentable.

A patent application was filed by a Tunisian Resident at the Indian Patent Office (IPO) seeking grant of patent titled as “method and device for accessing information sources and services on the web”. The claims of the claimed invention in the filed application comprised a combination of claims regarding method and device.

Upon an examination of the application, it was rejected by the Indian Patent Office (IPO) based principally on the ground that “claims 1 to 8 were under the scope of Section 3 (k) of the Patent Act.” An appeal filed by the petitioner before the IPAB against the controller’s decision, however IPAB upheld the Controller’s decision regarding Section 3 (K). IPAB held that the patent application does not disclose any 'technical effect' or 'technical advancement'. Aggrieved by the order of the IPAB, the petitioner filed a writ petition before the Delhi High Court (HC).

In its submission before the Bench, it was argued by the Petitioner that the rejection of the patent application was incorrect based on the reasoning that “any patent application which discloses an invention which would allow the user more efficient data base search strategies, more economical use of memory or higher speed, etc., may constitute “technical effect”. The argument was mainly based on a rationale that the claimed invention did bring about a “technical effect” as required and thus the rejection of the application was in contravention of the Patent laws and Computer Related Inventions (CRI) guidelines. The petitioner further prayed for an interpretation of Section 3 (k) in context of the guidelines issued by the IPO

The single judge bench after hearing both the parties took a note of the fact that that Computer Related Inventions (CRI) were dealt with by the following guidelines:

i. Draft Guidelines for Examination of Computer Related Inventions, 2013 ii. Guidelines for Examination of Computer Related Inventions, 2016 iii. Revised Guidelines for Examination of Computer Related Inventions, 2017

In response to the above arguments of the Petitioner, it was submitted by the defendant i.e. IPAB that “the present case does not call for any interference under Article 227 in as much as the IPAB had already taken a view in the matter and the Court, in its writ jurisdiction, could not re-appreciate the technical arguments raised before the Tribunal.”

Thus, in direct reference to Section 3 (k), the Court stated that “the bar on patenting was in respect of `computer programs per se….’ and not on all inventions which were based on computer programs.”

Stating that it was the effect of the computer programs which constituted the test of patentability, the Court observed as below:

“In today’s digital world, when most inventions are based on computer programs, it would be retrograde to argue that all such inventions would not be patentable. Innovation in the field of artificial intelligence, block chain technologies and other digital products would be based on computer programs, however the same would not become non-patentable inventions – simply for that reason. It is rare to see a product which is not based on a computer program. Whether they are cars and other automobiles, microwave ovens, washing machines, refrigerators, they all have some sort of computer programs in-built in them. Thus, the effect that such programs produce including in digital and electronic products is crucial in determining the test of patentability. Patent applications in these fields would have to be examined to see if they result in a technical contribution.”

Further in an interpretation of the term ‘per se’ in Section 3 (k), the Court held: “The words ‘per se’ were incorporated so as to ensure that genuine inventions which are developed, based on computer programs are not refused patents.”

It was further added that the legal position in India is also similar to Article 52 of the European Patent Convention and patent offices across the world have tested patent applications in this field of technology on the fulcrum of ‘technical effect’ and ‘technical advancement’. “If the invention demonstrates a ‘technical effect’ or a ‘technical contribution’ it is patentable even though it may be based on a computer program.” This shows that the Court was also of the view that the meaning of 'technical effect' was no longer in dispute owing to the development of judicial precedents and practices of patent offices in other countries.

In its decision the Court held that the patent application deserved a reconsideration in the context of settled judicial precedents which have already laid down interpretations of Section 3 (k) of the Patent Act 1970, along with guidelines issued by the IPO and other relevant legal materials. Also, the Court ordered for a re-examination of the patent application and a decision to be taken by the IPO within two months from the date of the judgement, after granting an opportunity of hearing to the Applicant.