Microsoft Technology v. Controller of Patents, Section 3(k), Delhi HC 2023

INTRODUCTION

Microsoft Technology Licensing, LLC (“the Petitioner”) filed an appeal against the rejection of its patent application number 1373/DEL/2003 (Convention) by the Indian Patent Office. The invention named "Methods and Systems for Authentication of a User for Sub-Locations of a Network Location” was falling in area of computer-related invention. The Patent office raised objection on the subject matter falling under exclusion with ref to Section 3(k) – and was merely a computer program\instructions as per the Patents Act, 1970 (“the ACT”). Aggrieved by the decision of the Controller’s Office, the petitioner filed appeal before Hon’ble Delhi High Court.

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FACTS OF THE CASE

The Convention patent application number 1373/DEL/2003 was filed by the Petitioner on November 7^th, 2003. In First Examination Report (“FER”) dated April 27^th, 2016, the objections were raised for under Section 3(k) of the ACT, as it was related to Computer-Related Inventions (“CRIs”) – whether the subject matters falling under CRIs excluded exclusively from patentability. The Petitioner’s claim was that the said invention was related to a two-tier authentication system with help of internet browser cookies to improve security in computer networks. The Patent Office raised objections during the patent application scrutiny, citing the invention lacks novelty and inventive step. Specifically, subject matter was falling in scope of non-patentability under Section 3(k) of the ACT. The Petitioner further submitted written arguments but the Controller's Office rejected the application on April 11^th, 2019.

PETITIONER CONTENTION

The Petitioner submitted his contentions before Hon’ble Delhi High Court as below,

1. The Indian Patent Office had acted unreasonably and in breach of natural justice standards in rejecting the patent application.
2. The Petitioner claimed the Patent Office had misinterpreted the Section 3(k) of the ACT. Specifically, the term "per se" was misconstrued. This term does not imply a complete exclusion on patenting computer programs, rather it excludes if it is only computer program\instructions "as such".
3. The Petitioner also extended his claim saying, it’s not just a computer program or Computer instructions, rather the patent’s subject matter was technical process which was a software, running with associated hardware components. Both software and hardware together helping in an existing technical problem of computer security
4. The invention provides a technical solution to enhance security in computer networks which has paramount importance, considering the technical contribution – based on explanation the patent subject matter should qualify it for patentability criteria in India.
5. Microsoft quoted the judicial precedent set in below cases,

• Ferid Allani v. Union of India¹, and
• Telefonaktiebolaget LM Ericsson v. Intex Technologies²,

Where, the Court had emphasised computer programs don’t have complete ban for patentability is India. If the applicant is able to showcase the technical advancement and contribution using the invention (Product\Process) which helps in addressing to an existing problem which the invention is applying.

RESPONDENT CONTENTION

The Respondent countered below in their argument,

1. The patent rights are territorial in nature; The Indian patent laws are in line with internationally accepted and agreed standard and framework. But as a developing country few aspects cannot be directly considered as per international norms for Indian patent regime, here the local need and territorial aspects come into picture. Specifically for computer related inventions the law differs from those of developed countries, and the legislative intent behind Section 3(k) was to exclude computer programs from patentability.
2. The patent rejection order by Indian Patent Office was valid as the invention fell under Section 3(k) and constituted” a computer program per se” which is excluded from patentability in India.
3. The invention in discussion operates at the user-interface level simply a computer Program or instruction and does not provide any technical effect or contribution to the hardware or computer system.

ANALYSIS OF CASE

The Court heard both the sides, the Court analysed below details in this case.

1. The Court checked into the legislative history of Section 3(k) and the guidelines issued by the Patent Office for examining Computer-Related Inventions (“CRIs”). It noted that the term "per se" was introduced to clarify that computer programs "as such" are non-patentable. But if CRIs involve technical advancement or contributions beyond the program. Such an invention may be eligible for patent grant in India subjected other administrative and procedural compliance is in place.
2. The Court found that the Controller got it wrong while rejecting the patent application solely on the grounds that it’s only computer-executable instructions. The subject patent provides a technical solution to a security problem in network authentication, offering a two-tier authentication process using cookies to enhance security and user experience.
3. The Court held that the invention's technical effect and contribution went beyond the user-interface level and addressed a critical security issue in computer networks.

JUDGEMENT

The Hon’ble Delhi High Court after considering all the facts put on record by both sides, concluded the judgement in favour of the Petitioner (patent-Applicant), and set aside the Controller's patent application rejection order dated April 11^th, 2019. The Court stating that the subject matter of the patent does not fall under the exclusion category of "computer program per se" under Section 3(k) of the ACT. The Court referred matter back to the Controller for reconsideration of the patent application on the grounds of novelty and inventive step or any other relevant statutory and procedural compliance. The Court directed the Patent Office to conclude the process within one month due to the approaching expiration of the patent term.

CONCLUSION

The Court emphasized “computer programs per se” is not blanket ban\exclusion from patentability in India. The Court stated that inventions should not be rejected as “computer programs per se”, if invention is providing technical advancements or solutions to real-world problems - Then can be candidate for patent grant. In case of CRIs related patent application, the Indian Patent Office need to adopt a more comprehensive approach in assessing CRIs, focusing on technical effects and contributions rather than merely categorized under exclusion as it is the implementation of algorithms. In this specific case, the Court also directed the Patent Office to re-evaluate the application and consider the technical merits of the invention considering judicial precedents and existing guidelines. Subsequently the Indian Patent Office reevaluated the patent application and found it in line for grant, accordingly the patent granted to the Petitioner on June 16^th, 2023.