Ferid Allani v. Union of India, CRI Patentability, Section 3(k), Patents Act 1970

INTRODUCTION

The Petitioner Ferid Allani filed a WRIT petition under the India Constitution Article 226 before the Hon’ble High Court of Delhi. The Petitioner challenged rejection of his patent application number No. IN/PCT/2002/00705/DEL (‘the Application’) by Indian Patent Office under Patent Cooperation Treaty (‘PCT  - defined under Section 2(1)(oa) of the ACT‘). The patent application was having  both method and device claims with title, ‘A method and device for accessing information sources and services on the web’, the Petitioner approached before the Hon’ble Delhi High Court in said suit against the decision of his patent application rejection.

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FACTS OF THE CASE

The Petitioner, a citizen of Tunisia had filed the Application in Indian Patent Office, at Delhi on 17^th July, 2002 with priority date 30^th December, 2000. During Patent Prosecution the Indian Patent Office issued the First Examination Report (‘FER’) on 21^st February, 2005. The Application was rejected with an objection for lack of novelty under Section 2(1) (j), of the Patents Act, 1970 (‘the ACT’) and subject matter falling in the exclusion list for non-patentability under Section 3(k) of the ACT. Subsequently the Petitioner made amendments in his application and resubmitted but the Patent Office objected to the application on ground as it was falling under the non-patentability defined under the statutory exclusion under Section 3(k).

The Petitioner's appeal before the Intellectual Property Appellate Board (‘IPAB’) dated 25^th March 2013 challenging the said Controller’s order of rejection, was also dismissed by the IPAB by the impugned order with the reason that the patent application did not demonstrate either ‘technical effect’ or ‘technical advancement’.

Hence the WRIT Petition W.P.(C) 7/2014 was filed by the Petitioner before Hon’ble Delhi High Court.

PETITIONER CONTENTION

The Petitioner through his Learned Counsel pleaded before the Hon’ble Delhi High Court with his contentions as below;

1. The Petitioner submitted that his said invention successfully demonstrated both ‘technical effect’ and ‘technical advancement’, which includes efficient database search strategies, which are efficient and have optimal memory consumption, and facilitating higher speed.
2. The Petitioner put reliance on the ‘Draft Guidelines for Examination of Computer Related Inventions, 2013’ published in June 2013, which was published by the Indian Patent Office on  official website which explicitly define ‘technical effect’ and ‘technical advancement’ which helps in context for Section 3(k) for computer related inventions and specific technical aspect for patentability.
3. The Petitioner contended that Section 3(k) should be interpreted considering these guidelines, which allow patenting computer-related inventions whose teachings gives sufficient disclosure and best method to perform along with the technical contribution.

RESPONDENT CONTENTION

1. The Respondent contested, IPAB was India’s first specialized appellate body for Intellectual Property disputes, designed to reduce burden on the High Courts, and having technical expertise which had a crucial role in shaping Standard Essential Patent ('SEP') jurisprudence. Keeping in mind the technical expertise and decision based on which appeal was rejected in the current case, the Court does not require to re-evaluate the technical arguments.
2. The Respondent maintained that the rejection was in accordance with Section 2(1)(ja) for novelty criteria and same defect was ratified via patent application Complete Specification amendment but still the statutory exclusion under Section 3(k) of the Act, which was limitation for patenting computer programs “per se“

ANALYSIS OF CASE

The Hon’ble Delhi High Court gave reliance on the below legal aspect while adjudicating the said WRIT Petition.

1. The Court noted that Section 3(k) does not exclude all computer-related inventions from patentability; rather it is only computer programs which fall under the criteria of “per se“. Patent applications involving computer related inventions shall be evaluated to determine if  they result in a `technical contribution‟. The addition of the terms “per se“ in Section 3(k) was a conscious step and the Report of the Joint Committee on the Patents (Second Amendment) Bill, 1999¹. The intention of the report is to assure genuine computer-related inventions get patent grants and was not intended to reject all such inventions. There was reference given to Article 52 of the European Patent Convention of 5^thOctober 1973 which has a similar position.
2. The Court referred ‘technical effect’ and ‘technical contribution’ are important points in determining patentability, as established by judicial precedents and international practices, same applied here as well.
3. The Court acknowledged the evolving guidelines for examining Computer Related Inventions (CRIs) issued by the Patent Office in 2013, 2016, and 2017 same shall be the base for evaluation of patents involving Computer related innovations and its exclusion if any in case relating to Section 3(K) of the ACT.

JUDGEMENT

In this case, the High Court of Delhi directed the Indian Patent Office to consider the re-examination of the Petitioner’s patent application. Also, the court set the judicial precedent to refer to the CRI Guidelines as settled practices while evaluating computer-related inventions. The Court guided the Indian Patent Office to conclude on the patent application within a two-month time window.

CONCLUSION

The Hon’ble Delhi High Court allowed the petition and directed the Indian Patent Office to reconsider the patent application, emphasizing the need to evaluate the invention's ‘technical effect’ and ‘technical contribution’ when related to computer-related invention and cannot be rejected directly.  

Overall, statutory Section 3(k) evaluation with additional validations for the computer-related inventions with reference to ‘technical effect’ and ‘technical contribution’ and any technical problem it is solving.