Section 3(k) of the Patents Act, 1970 provides a bar on patentability of invention related to a mathematical or business method or a computer programme per se or algorithms. Although Section 3(k) excludes 'a mathematical or a business method', computer programmes and algorithms are the ones receiving the highest objections/rejections from the examination authorities. In today's day and age, where most of the inventions are computer implemented or a predefined set of instructions, the question becomes more relevant in terms of the clause computer programmes per se, as non-patentable.
The Delhi High Court, in a decision dated 12th December, 2019, keeping an open mind ruled on this issue in Ferid Allani v. Union of India, WP(C) 7 of 2014. The facts of the case go something like; Ferid Allani, the Petitioner, filed a National Phase Application seeking grant of patent for a "method and device for accessing information sources and services on the web". However, said application was hit by Section 3(k) of the Patents Act during the examination stage.
In the First Examination Report (FER), in addition to the objections/rejections that the invention lacked novelty and inventive step under Section 2(1)(j) and Section 2(1)(ja), was also objected under Section 3(k), it being a computer programme. Not satisfied with the response by the Applicant, the Controller of Patents rejected the Application. The Petitioner preferred an appeal before the Intellectual Property Appellate Board (IPAB). The IPAB dismissed said appeal stating that the claimed invention did not disclose any technical effect or advancement, which led to the Writ Petition in Delhi High Court, challenging the order of IPAB.
In its decision, the Court observed that the bar is on computer programmes per se, and not all computer related inventions. Further, the Court observed that the phrase 'per se' was incorporated in the Section 3(k) of the Act to ensure that genuine inventions are provided patent protection. The Court relied upon Clause 4 of the Report of the Joint Committee of the Patents (Second Amendment) Bill, 1999 which stated the addition of the phrase 'per se' in clause (k) of Section 3 with a view that the computer programme may include certain other things, ancillary thereto or developed thereon. The legislative intent behind the same was to not reject them for grant of patent if they are inventions. That is to say, they result in a technical contribution or technical effect.
The Court, further, relied upon the Draft Guidelines for Examination of Computer Related Inventions of 2013, where the phrase 'technical effect' was defined as a solution to technical problems and includes higher speeds, reduced hard-disk access time and more economical use of memory. In view of the same, the Court directed the Patent Office to re-examine the Petitioner's application.
Diving a little deeper into the legislative intent being hinted upon by the Court in the abovementioned case law, it would be appropriate to mention the Patents (Amendment) Ordinance of 2004, which proposed the amendment of Section 3(k) to read clause (k) as "a computer programme per se other than its technical application to industry or a combination with hardware" and introducing clause (ka) which read "a mathematical method or a business method or algorithms". Said Ordinance aimed to provide a straightforward and confusion-free approach to the computer related inventions under Section 3(k). However, said Ordinance was repealed in 2005, a few months after being introduced. The Ordinance with its proposed amendment would have avoided the uncertainty and hesitation that we see today from the Patent Office with respect to computer related inventions.
Over the years, the Manual of Patent Practice and Procedure by the Patent Office has tried to pave a clearer path with respect to computer related inventions. The current Manual of Patent Practice and Procedure issued in November 2019, cites the Revised Guidelines for Examination of Computer Related Inventions of 2017 for Section 3(k). The Revised Guidelines on the other hand states that if the technical contribution of an invention lies in both the computer programme as well as the hardware, the application shall proceed to other steps of patentability. The Guidelines from 2017 bring certainty to the examination procedure of the computer related inventions and give an Applicant a reasonable chance to get protection for their invention.
However, based upon the directions of the Hon'ble High Court, the Controller of Patents re-examined the patent application and issued a Hearing Notice to the Agent for the Applicant. The Controller found the National Phase Application to lack novelty in view of the cited prior art documents and further falling under the purview of Section 3(k), thereby refusing the instant Patent Application.
Further, an Appeal has been preferred by the Applicant under Section 117A of the Patents Act, before the Intellectual Property Appellate Board. It is pertinent to note that the term of patent shall expire on 29th December, 2020.
Although an appeal to the order of the Controller is still pending, the Hon'ble High Court's decision has opened certain aspects of the examination of computer related inventions and shed light on the fact that when examining said inventions, one must adhere to the legislative intent behind the addition of the phrase 'per se', which in this case works as an asterisk in clause (k) of Section 3 when it comes to computer programmes. The decision indeed paves a path for more successful patents and change in the examination procedure of computer related inventions.