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Computer Programs Patentable if “Technical Effect” or “Technical Contribution”demonstrated:Delhi High Court

January 16, 2020

By Renu Bala and Sukku 

In a recent case namely, Ferid Allani v. Union of India & ors., the Hon’ble High Court of Delhi has held that an invention even if based on a computer program demonstrates a “technical effect” or a “technical contribution” is patentable.

Brief Facts:

The present writ petition was filed before the Hon’ble High Court of Delhi against IPAB’s (Intellectual Property Appellate Board) order, wherein the IPAB while confirming the order of Patent Office rejected the Petitioner’s patent application for “method and device for accessing information sources and services on the web”.

The petitioner’s application was rejected by the Patent office on the ground that Claims 1-8 is a computer program and does not constitute to be a patentable invention as defined in Sub-section k of Section 3 of Patent Acts 1970 and Claimed invention in Claims 9-14 lacks Novelty as well as Inventive steps.

Aggrieved by the aforesaid, the Petitioner approached the High Court of Delhi.

Petitioner’s contentions

  • That the specification clearly disclosed a technical effect and a technical advancement, especially as of the priority date.
  • That the invention was not a mere software which is simply loaded on to a computer. It required a particular method of implementation.
  • The Petitioner also placed reliance on the Draft Guidelines for Examination of Computer Related Inventions, 2013 which defines “technical effect” and “technical advancement”.
  • The Petitioner further contended that any patent application which disclosed an invention allowing the user more efficient data base search strategies, more economical use of memory or higher speed, etc., would constitute “technical effect” and that Section (3)(k) of the Patent Act ought to be interpreted in the context of the Draft guidelines which have been introduced.

Delhi High Court

The Hon’ble High Court of Delhi while directing re-examination of the patent application, made the following notable remarks and observations in the case:

  • The High Court while passing the order in the present case rendered special attention to the Guidelines issued by the Patent office in respect of CRIs, namely, Draft Guidelines for Examination of Computer Related Inventions, 2013, Guidelines for Examination of Computer Related Inventions, 2016, Revised Guidelines for Examination of Computer Related Inventions, 2017.
  • While substantiating on Section 3(k) of the Act, the Court noted that the bar on patenting is in respect of `computer programs per se….’ and not all inventions based on computer programs.
  • The Court also remarked that 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.
  • The Court was of the view that the Patent applications in these fields would have to be examined to see if they result in a “technical contribution”. 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.

The Hon’ble High Court in view of the Guidelines issued by the Patent Office and judicial precedents directed the Patent Office to re-examine the patent application of the Petitioner and render a decision on the same within two months from the date of this order.

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