CRI Blog Series Part 2
I. Introduction
In the previous blog, the position regarding technical effect and technical contribution has been analysed. The logical question that may arise in any person’s mind is “what is the position of the other three categories, i.e. mathematical model, business model, and algorithm”, in view of the qualification placed on the category of computer program.
II. Position in foreign jurisprudence regarding different categories.
The exception for patentability u/s 3(k) is analogous to Art. 52 of the European Patent Convention (EPC). The relevant excerpts from the provision are as follows:
“(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
XXX
(c)schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
XXX
(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.”[1] (Emphasis added)
The European law has put a qualifier “such subject-matter” or “activities as such” on all categories within para.2. The mathematical method, having a technical effect in the nature of implementation of such mathematical model in/on hardware, is patentable.[2] The EU Boards of Appeal have held that the business method cloaked as a technical means is not patentable.[3] Technical terms used in the claim must be evaluated in the context they are used to evaluate the technical effect of the claim.[4] The patentability is not determined by judging technical contribution over prior art, rather, it is an absolute requirement and not a relative requirement as novelty or inventive step.[5]
The various patent applications decided by the Appellant Board have settled the position in EU law that the test of technical effect or technical contribution is applied on all categories and not only limited to computer program and this extension is by reason that the convention is not aimed at denying patent to actual invention but for denying non-patentable or non-technical matter disguised as an invention.
III. Whether the word per se impacts the remaining three exclusionary categories?
The Hon’ble DHC has held that per se qualification is limited to the computer program category and is not applicable to business methods.[6] The legislature by drafting cl. (k) as “mathematical or business model” has grouped these two categories. Therefore, applying noscitur a sociis, as far as the mathematical method is concerned, the per se qualification cannot be read into it. This line of argument may be a logical argument or a correct approach in the interpretation of statutes, but my respectful argument is that poor drafting by legislators should not punish honest inventors. Encoding-Decoding, Encryption-Decryption, and Noise Removal techniques can be perceived as mathematical models, nonetheless, they are innovations with industrial applicability deserving of protection under patent law. Mathematical methods cannot be put in the same bracket as business methods for patent law. Therefore, there is a need to divorce the mathematical method from the business method category and read the qualifications of technical contribution, solution, and effect in this category. The question remains: What is the position of algorithms?
The Hon’ble DHC, while dealing with the algorithms as an exclusionary category, has reaffirmed its observation made in respect of the business model and held that per se qualification is limited to computer programmes only.[7] But at the same time court has held that algorithms integrated in devices or hardware creating a tangible benefit can be perceived as patentable inventions, and to test it, the court has applied the technical effect test.[8]
Hon’ble DHC in Blackberry case held that the law, so far as per se is concerned, is different in India than EU, the qualifications due to per se are not applicable to the category algorithm in India.[9] A pure sequence of instructions without any effect on hardware is not patentable in India.[10] This approach is contrary to the decision of the Hon’ble Madras HC wherein it is held implementation of common command surface, which largely involved a series of instructions without any link or effect on hardware, is a patentable invention.[11]
This dichotomy will exist as long as the Indian courts and Indian legislators do not grapple with the technical concept of an algorithm and computer program. “Algorithm” is not defined in the Patent Act. The 2017 Guidelines have imported a plain dictionary definition. Madras HC has defined “algorithm” as “a set of rules or instructions for solving a problem, typically through a sequence of steps or operations”[12] Computer Programme has been defined in the Copyright Act, 1957 as “means set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result”.[13] The definition of “Algorithm” as used by Madras HC and the definition of “Computer Programme” as given in the Copyright Act has huge similarity only difference is that algorithm is only a set of instruction, but when these set of instructions are written in computer readable or executable format it becomes a computer programme. Therefore, the qualification brought to the computer programme by attachment of per se shall be read into the algorithm. Otherwise, the object of the legislature will be frustrated as, legislature by putting qualification in form per se do not intend to protect computer programme but they want to protect technical advancement, which will be in form of a computer algorithm, as the technical contribution and effect will largely be applied on general computer and not on particular software or computer machine.
The only reason why an algorithm can be kept separate from the class of computer programs is that there might be instances where the algorithm described is abstract without any practical application. This, however, comes under another criterion of patentability, that is, industrial application. The legislators/ patent office need to clearly define the extent or nature of hardware involvement necessary for patentability. The discussion on technical contribution as a test of patentability leads to another aspect: the interplay of s. 2(j) & s. 3.
IV. Effect of s. 2(j) r/w s. 2(ja) and s.2(ac) on s. 3(k).
The Indian Courts have evolved the Triple test for patentability as extracted through s. 2(j) as inventive step, non-obviousness/ novelty, and industrial application. The s.3 poses a different kind of hurdle for obtaining patent protection. It operates on a wider plane and restrains the grant of patent protection for any invention; though satisfying the above triple test comes within exclusively listed subject matters. EU patent law recognises that the requirements of novelty, inventive step and industrial applicability are separate from the bar on patentability of particular subject matter.[14] The Hon’ble Apex Court, while deciding Novartis case, has held that s. 3(d) is sui generis in respect of the remaining clauses of Section 3 due to its legislative history and read s. 2(j) and s. 3(d) together, making the threshold for invention higher.[15] The question arose; can we apply similar rationale for s. 3(k)?
A closer analysis of EU patent law and Indian patent law brings stark differences. Under Art. 52(1)[16], inventive step and industrial applicability do not define “invention”, but are essential parameters to grant patent protection. Whereas inventive step and industrial applicability are used to define “invention” in the Indian Patent Act and s. 3 list out an exhaustive list of exclusions from the definition of invention which can be inferred from the wordings “following are not inventions within the meaning of this Act”. Therefore s.3 and s. 2(j) are not completely independent as under the EU Patent Law. This line of argument can be further reinforced by the existence of a few categories that are more specifically defined or create heightened requirements for “invention”. It can be argued that cl. (b) narrows the meaning of industrial applicability to exclude harmful industrial applications, whereas cl. (a) and (c) has defined the extent of the requirement of industrial applicability. Another example is cl. (e) and (f) are only extensions of the requirement of inventive step. Therefore, it may be a fallacy to say that s. 2(j) and s. 3(k) are completely independent of each other, and the rationale of the Novartis case may also be extended to s.3(k).
V. Conclusion
The Indian Legislators, while making amendments, have inserted the word per se to protect the honest and bona-fide computer-based inventions to encourage the development of IT, electronics and software sectors, but while doing so by appending the word per se only to computer programs have created a Pandora’s box for inventors. The Hon’ble DHC, while underlining the test of technical contribution and technical effect, has emphasised the need for inserting examples in CRI guidelines as a signpost for drawing limiting lines of technical contribution or technical effect connotes.[17] With the evolution of breakthrough technologies like AI, Blockchain, Quantum Computing, etc., the courts and patent office need to be more alert against attempts to guise the technical problem itself as a technical solution, or unequal treatment to similar inventions due to the complexities of technology.
[1] Convention on the Grant of European Patents, 17th Edn. (2020).
[2] T 2330/13, SAP SE, ECLI:EP:BA:2018:T233013.20180509, para. 5.4.
[3] T 0388/04, Pitney Bowes Inc., ECLI:EP:BA:2006:T038804.20060322, para. 5.
[4] T 0154/04 , Method of estimating product distribution, ECLI:EP:BA:2006:T015404.20061115, paras. 20 to 23.
[5] Id, para. 9.
[6] Opentv INC v. Controller of Patents and Designs and Anr., 2023 SCC OnLine Del 2771, para. 69.
[7] Lava International Limited v. Telefonaktiebolaget LM Ericsson, 2024:DHC:2698, para 68.
[8] Id., para. 70.
[9] Blackberry Ltd. v. Controller, Patents and Designs, (2024) 4 HCC (Del) 471, para. 45.
[10] Id. ,para. 48.
[11] Microsoft Technology Licensing LLC, One Microsoft Way v. Assistant Controller of Patents, Patent Office, 2024 SCC OnLine Mad 2785.
[12] Microsoft Technology Licensing LLC, One Microsoft Way v. Assistant Controller of Patents, Patent Office, 2024 SCC OnLine Mad 2785, para. 25.
[13] The Copyright Act, 1957 ( Act 14 of 1957), s. 2(ffc).
[14] T 0154/04 , Method of estimating product distribution, ECLI:EP:BA:2006:T015404.20061115
[15] Novartis AG v. Union of India, (2013) 6 SCC 1, para. 88.
[16] Convention on the Grant of European Patents, 17th Edn. (2020), Art. 52(1).
[17] Microsoft Technology Licensing, LLC v. Assistant Controller of Patents and Designs, 2023 SCC OnLine Del 2772, para. 45.
Authored by: Mr. Viraj Thakur
Pursuing LLB ’25, Faculty of Law, University of Delhi | IN Patent Agent |
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