The Delhi High Court, in two of its recent decisions, while adjudicating appeals against the rejection of the Appellant’s (Blackberry Limited) patent applications, demonstrated disparate approaches of assessing patentability of computer related inventions (CRIs) under Section 3(k) of the Patents Act, 1970 (‘Act’). Notably, both judgments were delivered by the same Single Judge Bench of the Delhi High Court on the same day.
In the first case, Blackberry Limited v. Assistant Controller of Patents and Designs [C.A. (COMM.IPD-PAT) 229/2022][1], the Court, in a judgment dated 30 August 2024 (reserved on 16 April 2024), dismissed the appeal, thereby upholding the rejection of Appellant’s patent application titled ‘Administration of Wireless Systems’ bearing Application Number 1762/DEL/2008. In this case, the Court applied a narrow approach, focusing on whether the technical contribution lies merely in algorithmic processes, concluding that the invention fell under the exclusion criteria of Section 3(k)[2] of the Act.
In the second case, Blackberry Limited v. Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 318/2022][3], the Court, in its judgment, also dated 30 August 2024 (reserved on 26 July 2024), overturned the rejection of the Appellant’s patent application titled ‘Auto-Selection of Media Files’ bearing Application Number 717/DEL/2009. In this case, the Court adopted the well-established approach of determining presence of technical effect, observing that an invention contributing to enhancing the capability of any device to such an extent that the functionality of the device is made more efficient, indeed constitutes a concrete technical effect and technical contribution. Consequently, the Court held that such an invention should not be excluded from patentability under Section 3(k) of the Act.
These contrasting decisions, delivered on the same day by the same Single Judge Bench, highlight the evolving and sometimes inconsistent approaches to assessment of CRIs under Section 3(k). The fact that the same Bench reached different conclusions in similar cases underscores the complexity and nuanced nature of assessing patentability of CRIs under Indian patent law.
Facts of the first case
In this case, despite the Applicant’s submissions during the prosecution that the claimed invention has a technical effect, the IPO rejected the application. The rejection order identified the claimed invention as non-patentable under Section 3(k) of the Act, asserting that the invention comprised sets of instructions and software that were purely functional, and did not include any inventive hardware features. In response, the Appellant initiated the present appeal challenging the rejection order.
In the appeal, the Appellant argued that the invention administers wireless systems by configuring client devices using primary and secondary servers. Explaining the problem being solved, the Appellant submitted that these servers maintain policies determining device operations, but conflicts can arise from inconsistent policies. The Appellant argued that this invention addresses this technical problem by providing a solution to resolve conflicts between multiple servers. This solution involves evaluating and prioritizing policies from primary and secondary servers, ensuring proper device operation.
In its analysis of the invention, the Court noted that the claims of the invention involve conditional steps executed by programs, including detecting data, evaluating policies, and resolving conflicts. These steps were viewed as reducible to if-then-else logic statements. To support these assertions, the Court examined specific paragraphs of the specification (e.g., [0050], [0051], [0061]) and interpreted that the core functionality of the invention relies heavily on logical instructions to manage data dissemination and privacy settings, with server policy agents operating based on communication policies to manage information flow.
While acknowledging that the invention has a technical effect, the Court asserted that this technical affect primarily arises from an algorithmic process regulating information flow through a sequence of instructions. The Court did not find sufficient evidence of a further technical effect or enhancement of hardware functionality that would overcome the exclusion under Section 3(k).
Though the Appellant pointed out that the corresponding application for the subject patent application has been granted by the European Patent Office (EPO), the Court observed that while under Article 52 of the European Patent Convention, algorithms are excluded from patentability only ‘as such,’ allowing for the patentability of technical implementations of algorithms, the Patents Act in India does not include such a qualification. The bar on algorithms in India is absolute, as Section 3(k) of the Act does not contain the ‘as such’ limitation. The Court held that, in light of the differing position of law in India and Europe, the views taken on the allowability of the corresponding EP application by the EPO may not be similarly applied to the current Indian application.
In conclusion, the Court found that while the claimed invention in the first case has a technical contribution, said contribution primarily arises out of the use of an algorithmic process that regulates the flow of information through a sequence of instructions. In the Court’s view, the invention lacked a demonstrable technical effect beyond the algorithmic process, and thus deemed the invention to fall within the exclusion criteria of Section 3(k) of the Act.
Accordingly, the Court upheld the decision that the invention does not warrant patent protection and rejected the appeal.
Facts of the second case
The IPO rejected the patent application referred to in the second case under Section 3(k) of the Act. In its rejection order, the IPO contended that the subject invention, which relates to automatically selecting media files based on confidence level of the users and available storage in the device, is essentially a computer program. The IPO deemed the claims an algorithm executed on a general-purpose computer, thus falling within the scope of Section 3(k) of the Act and not patentable.
In the appeal, the Appellant argued that the subject patent application addresses a technical problem, i.e., it evaluates the memory available on a particular device which is connected to a server and based on the preferences of the user, upon the memory in the device becoming available, it downloads the amount of content which the device can handle.
The Court, in its analysis of the invention, recognized the invention as a method for managing content in devices, addressing a technical problem in content management and storage optimization. The Court noted that the invention indeed enhances the capability of the device to handle media content within limited storage space, viewing this as a concrete technical problem in the realm of digital content management.
Unlike in the first case, in this case, the Court found that this invention goes beyond mere instructions or algorithms, providing a concrete technical solution to a technical problem. The Court viewed the invention as an effective integration of software capabilities with hardware constraints (storage limitations), resulting in improved overall device performance. The Court considered how the invention improves user experience by automatically managing content based on preferences and usage patterns as a technical contribution.
The Court also noted that while no prior art references were cited in the rejection order of the IPO, arguments similar to those used by the EPO to object to the corresponding EP application for lacking inventive step, were applied by the IPO in the refusal order, and indicated under Section 3(k). Despite similarities with prior art US2007043765, the Court identified novel elements in the subject patent, including a 'confidence level' based on likeability, specific categorization steps, and a cache manager. These features were deemed to provide technical advancements beyond the prior art. The Court held that elements like cache management, metadata-only library files, and dynamic media synchronization provide technical effects both within and beyond the computer, constituting advantages extending beyond the excluded subject matter.
Based on these factors, the Court concluded that the invention is not merely a computer program per se or an algorithm, but a technical solution with a demonstrable technical effect, thus overcoming the Section 3(k) barrier. Accordingly, the Court reversed the IPO decision to reject the patent application.
Analysis of both judgments
In both cases, the Court focused on how the functionality of the device is enhanced, and if the same was also included in the claims. However, the application of this test led to different outcomes in the two cases.
The authors are of the view that, in the first case, too much emphasis was laid on if-then-else logic being implemented, disregarding other limitations of the claims and the technical effect highlighted by the appellant. By focusing primarily on the algorithmic aspects rather than their practical implementation, the tangible improvements in device performance, network efficiency, and overall system functionality resulting from the implementation appear to have been overlooked. It is also notable that the Appellant though had explained the technical problem and solution, but same does not seem to have been analyzed by the Court. The Court concluded that technical effect, although present, was limited to regulating data transmission between servers, which was insufficient to overcome the algorithmic nature of the invention. As a result, the Court concluded that the inventiveness of the invention lies in the algorithm itself, rather than its implementation and resulting technical contributions.
In the second case, however, the Court assessed the claims as a whole and considered the technical effect brought about by the claims. The Court observed that an invention contributing to enhancing the capability of any device to such an extent that the functionality of the device is made more efficient, constitutes a concrete technical effect and technical contribution. Consequently, the Court held that such an invention would not be excluded under Section 3(k) of the Act.
While courts have previously acknowledged the need for the patent regime in India to align with other major jurisdictions, the introduction of a new if-then-else test does not appear to be a step in this direction. This is particularly noteworthy with respect to the first case considering that the corresponding European patent application was allowed. The inconsistent application of Section 3(k) in these cases raises questions about the clarity and predictability of patent eligibility criteria for CRIs in India, impacting international harmonization efforts in this rapidly evolving technological field.
Conclusion
These cases illustrate the evolving nature of CRIs patentability in India. While the Court reaffirmed that inclusion of novel/inventive hardware is not to be insisted upon while considering patent eligibility of CRIs, there appears to remain a persistent inclination towards recognizing improvements in hardware functionality.
While some judgments provide for considering the overall technical effect of the claims of the invention when assessing patent eligibility of the CRI, decisions like the one in the first case tend to make the patentability standards relating to CRIs unpredictable. The underlying reason for such unpredictability, in the view of the authors, is the lack of a clear, standardized definition of what constitutes an ‘algorithm’ in the context of Indian patent law.
The technical effect test is typically used to determine whether a CRI falls within or outside the purview of ‘per se’ exclusions of Section 3(k). As apparent from the above-discussed orders, the application of this test does not extend to algorithms, which are absolutely barred from patentability. However, what is unclear at present is when does a CRI qualify as an ‘algorithm’, so as to constitute excluded subject matter despite the presence of technical effect. The confusion is particularly evident in cases where the invention is computer-implemented.
The current guidance provided by the Manual of Patent Office Practice and Procedure (MPPP) on algorithms appears to be broad and potentially open to varying interpretations. This ambiguity in defining algorithms, especially in the context of CRIs, usually leads to inconsistent assessments. Some CRI inventions may be classified as algorithms and thus deemed unpatentable, while similar computer-implemented inventions may qualify as eligible subject matter if they pass the technical effect test.
This situation creates uncertainty for patent applicants, particularly in the field of CRI. In this respect, a constructive step from the judiciary would be to clarify the scope of exclusion of ‘algorithm’. A more precise definition of ‘algorithm’ in the context of Section 3(k) of the Act may provide greater predictability in how CRI applications are examined and evaluated.
Such clarity would benefit both applicants and examiners, and provide for more consistent outcomes in patent examinations and legal proceedings. This may also foster innovation in the software industry while ensuring that patent protection is granted to inventions that genuinely contribute to technological advancement.
[The first author is a Senior Associate while other two authors are Partners in IPR practice at Lakshmikumaran & Sridharan Attorneys]
[1] https://indiankanoon.org/doc/50904559/
[2] Section 3(k): a mathematical or business method or a computer programme per se or algorithms;
[3] https://indiankanoon.org/doc/24328013/
