Are Computer Related Inventions Patentable in India?

In its recent ruling in Ferid Allani v. Union of India & Ors., the Delhi High Court reinterpreted jurisprudence under Section 3(k) of the Indian Patents Act, 1970 concerning patentability of computer software inventions. The December 19, 2019 decision setting out
new guidelines for determining whether or not inventions containing computer software were barred under Section 3(k) of the Indian Patents Act, 1970 (“Act”) is a significant landmark as it paves the way for patentability of new technological advancements in our growing digital world.

To recap, Section 3(k) of the Act states:

The following are not inventions within the meaning of this Act, –
…
(k) a mathematical or business method or a computer program per se or algorithms;

As the wording clarifies, the bar is on computer programs per se and not inventions containing computer programs or software. However, up until the Court’s decision, the Indian Patent Offices adopted a rather restrictive and inconsistent approach towards inventions comprising computer software.

Even though the Patent Office had previously issued policy guidelines (in 2013 and 2017) for examining computer related inventions, more often than not, inventions that featured computer software were rejected under Section 3(k) merely on the grounds that computer software formed a substantial feature of the inventions. For example, while the 2017 guidelines (which represented an evolution of the Office’s policy towards computer inventions) stated that examination of computer related inventions would focus “on the underlying substance of the invention, not the particular form in which it is claimed, they also affirmed the Office’s position that such inventions would not be allowed if the specification supported performance of the invention solely by computer program – because (the Office reasoned) then the invention was nothing but a computer program per se. Although the guidelines later suggested that computer related inventions that presented a technical effect along with technological advancement could be patentable, the confusion relating to whether or not the invention was performed solely by the computer program contained therein often led to refusal of legitimate inventions. The confusion also led to an inconsistent approach meaning that the patentability of inventions featuring computer software depended more on the sensibilities of individual Examiners than on the policy of the Patent Office.

In its decision the High Court reiterated that the test for determining patentability was simply whether or not it demonstrated either a technical effect or a technical contribution. The Court clarified that “if the invention demonstrates a “technical effect” or a “technical contribution” it is patentable even though it may be based on a computer program.”

Briefly, the Petitioner in the case – Mr. Ferid Allani, a Tunisian national, had filed a patent application in 2002 for a “method and device for accessing information sources and services on the web”. The claims in the patent consisted of both method claims and device claims.

In its final determination, the Patent Office refused the application, concluding that the method claims related to a computer program and thus barred under Section 3(k) of the Act while the device claims lacked novelty and inventive step.

The Petitioner then appealed the decision before the Intellectual Property Appellate Board (IPAB), which ultimately sustained the refusal concluding that the application did not disclose any technical effect or technical advancement. The Petitioner then instituted Writ proceedings before the Delhi High Court to challenge the IPAB decision.

In its decision overturning the refusal, the Court acknowledged that legislative history of Section 3(k) as well as earlier decisions interpreting this provision did not completely bar computer related inventions, stating:

“The bar on patenting is in respect of `computer programs per se….’ and not all inventions based on computer programs. 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, blockchain 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.”

Holding that patent applications in this field have to be examined from the point of view of whether or not they produce a technical effect, the Court further noted that Patent offices around the world also use the test of “technical effect” and “technical contribution” as the criteria for determining patentability.

It directed the Patent Office to re-examine the petitioner’s application applying these standards, signalling that the Office’s conservative approach is at odds with global practice.

The Court’s decision is a very welcome one that has far reaching implications in today’s world. By revising the standards for judging computer related inventions, the Court recognised the significant impact computers have on human (and Indian) technological advancement and has opened doors for a significant number of inventors who were up until now unprotected. In addition, by recognising foreign office practices, the Court has indicated that office procedures and policies in India must continually adapt to align with global standards.

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