This is our guest post first published in the bulletin of Germany’s leading IP firm, Boehmert & Boehmert.
Please click here to read the post. (https://www.boehmert.de/en/activities/bb-bulletin/software-related-inventions-are-not-always-computer-programs-per-se-lessons-from-the-allani-case-by-the-indian-intellectual-property-appellate-board/ )
The Allani case sheds lights on an appropriate approach for examining Computer Related Inventions (CRIs) in India. Particularly, the courts addressed questions on the significant hurdles faced by CRIs in view of what would constitute “technical effect” and “technical advancement” referring to examination guidelines.
Patentability of Computer Related Inventions (CRIs) have always been a subject of international attention. The provision that deals with patentability of CRIs in India is Section 3(k) of the Patents Act, 1970 (“the act”). Section 3(k) was introduced in the act in 2002 to principally bar the patentability of “a mathematical or business method or a computer programme per se or algorithms”. The act however does not define the terms ‘software’ or ‘computer programmes per se’. In the same year, a French inventor, Ferrid Allani filed a national phase application in India titled “Method and device for accessing information sources and services of the web” which was accorded patent application number IN/PCT/2002/00705/DEL. The application consisted of both method and device claims and was based on the PCT application PCT/FR2000/003759, which in turn claimed priority from the French patent application numbered 99/16704.
During prosecution before the Indian Patent Office (IPO), the device claims were objected to as lacking novelty and inventive step, while the method claims were objected for being directed to a computer programme per se under Section 3(k). However, as was the case then, there was no clear understanding on what would constitute a “computer program per se” or an “algorithm” for software related inventions – as there were no guidelines issued for examination of CRIs by the IPO at that time. This is perhaps what led to the fall and rise of Allani’s invention before the Indian legal system.
The application was rejected by the IPO and the subsequent appeal was also dismissed by the IPAB, stating that the patent application failed to disclose any technical effect or technical advancement. The applicant then filed a writ petition before the Delhi High court challenging this decision of the IPAB. By the time the matter was brought up for hearing before the court, the IPO had already issued a set of draft guidelines for Examination of Computer Related Inventions. While advancing his arguments before the court, the applicant made reference to the guidelines and pointed out all the paragraphs of the patent specification which disclosed technical effect and technical advancement, in accordance with the CRI guidelines. It was held that CRIs should be examined in accordance with judicial pronouncements on Section 3(k) and the Guidelines issued with respect to the same. Some important observations made by the court on patenting of CRIs are as follows:
- “the bar on patenting is in respect of ‘computer programmes 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.”
- The addition of the terms ‘per se’ in Section 3(k) was a conscious step … because sometime the computer programme may include certain other things, ancillary thereto or developed thereon. The intention here is not to reject them for grant of patent if they are inventions. However, the computer programmes `as such’ are not intended to be granted patent…
The court directed the IPO to re-examine the patent application based on the fact that computer programs embedded in digital or electronic devices must be tested for technical effect, and that inventions relating to computer programs must be examined in the context of modern technology. The IPO however once again refused the patent application under Section 3(k) on February 7, 2020 and Allani yet again filed an appeal against the order before the IPAB.
The applicant stressed before the IPAB that the claims of the impugned patent application clearly exhibited technical effect by delaying emitting of a “final” request to (web) internet by locally implementing preliminary selection steps and using said locally implemented selection to form a well-construed query which is finally emitted to the Internet. The applicant listed the following technical advantages as a consequence of the aforestated features:
1. bandwidth (for emitting a request on web/ internet) is utilized only once (per request) [saving of network resources];
2. the mean time duration observed for accessing searched information is drastically reduced; and
3. likelihood of a successful access of information resource increases manifold.
In the arguments presented before the IPAB, the applicant referred to the ‘examples of technical effect’ as provided in the CRI guidelines of 2013, the excerpt of which is provided as under:
“It is defined for the purpose of these guidelines as solution to a technical problem, which the invention taken as a whole, tends to overcome. A few general examples of technical effect are as follows:
- Higher speed;
- Reduced hard-disk access time;
- More economical use of memory;
- More efficient data base search strategy;
- More effective data compression techniques;
- Improved user interface;
- Better control of robotic arm;
- Improved reception/transmission of a radio signal.
Allani argued that his invention clearly demonstrated at least the underlined technical effect. While the hurdle of technical effect was crossed, Allani faced yet another hurdle. The same CRI guidelines which necessitated ‘technical effect’ also stated that technical effect alone was insufficient for granting a software patent in India and instead, like any other conventional invention, the technical effect should also result in technical advancement to the state of the art. The latest guidelines on examination of CRIs issued in 2017 reiterated this as follows:
“Since patents are granted to inventions, whether products or processes, in all fields of technology, it is important to ascertain from the nature of the claimed Computer-related invention whether it is of a technical nature involving technical advancement as compared to the existing knowledge or having economic significance or both, and is not subject to exclusion under Section 3 of the Patents Act.”
Allani was able to prove technical advancement of the present invention over the art, and the IPAB, while ruling in favor of the applicant, stated as follows:
In fact, as compared to D1, the present invention solves the aforesaid problem, thereby optimizing the mean time duration and bandwidth usage required in successfully accessing a remote resource. D1 does not achieve the ‘technical effect’ of present invention, i.e. saving of the internet bandwidth as well as the reduced time duration in receiving the desired search results. Rather in contrast, D1 remains only a method of selection, fetching data from either a local station or updated data from a central station. In D1, the internet bandwidth is used again and again since the user continuously hops from Location Station to a Central Server, irrespective of the fact that whether ultimately the data item is retrieved or not.
Although the High Court and IPAB only reiterated what was already available in the CRI guidelines, the decision gives unprecedented clarity on patentability of computer related inventions in the context of the CRI guidelines. The ruling clearly redefines the scope of granting patents to software related inventions in India, which was at times curtailed by the IPO. This signals a pro-patenting approach of the courts for CRIs in India. That said, it is important to note that the IPO did not file their representation before the IPAB in this matter defending their rejections, the IPAB infact passed an ex-parte decision dated July 20, 2020.
One of the most important highlights of this entire case, which will be referred for all patent applications filed in the field of CRI and AI in India is as follows:
If the invention demonstrates a “technical effect” or a “technical contribution”, it is patentable even though it may be based on a computer program. Therefore, without appreciating the technical effect produced by the present invention, as elucidated above, the mere fact that a computer program is used for effectuating a part of the present invention, does not provide a bar to patentability. Thus, the invention MUST be examined as whole and the following factors are to be considered while deciding upon the patentability of such inventions – i.e (i) technical effect achieved by it, and its (ii) technical contribution.