Demystifying Section 3(k) of the Indian Patents Act

By Aastha Suri and Rashmi

Introduction

This article relates to a judgment passed by the Hon’ble Delhi High Court on an appeal filed under Section 117A by the applicant, Blackberry Limited, against an order dated September 19, 2019, issued by the Assistant Controller in the patent application 717/DEL/2009, wherein the said application was deemed to be refused under Section 15 of the Indian Patents Act.

BRIEF OVERVIEW OF THE MATTER

The applicant filed a patent application bearing application number 717/DEL/2009, titled “Auto-Selection of Media Files” on April 06, 2009, with the Indian Patent Office (IPO), claiming priority from multiple U.S. applications with the earliest priority date of the application as May 12, 2008, and the Indian application was published in patent journal dated August 31, 2016. Subsequently, a First Examination Report (FER) was issued by the Assistant Controller on September 28, 2016, citing objections pertaining to lack of novelty, lack of inventive step, and non-patentability under Section 3(k) of the Patents Act, 1970. The applicant filed the response to the FER along with an amended set of claims on December 20, 2016. Thereafter, a hearing notice was issued by the Assistant Controller on July 08, 2019, wherein the objection of “non-patentability” u/s 3(k) was again cited by the Assistant Controller.

The details of the subject patent application are provided in the table below.

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Application Number	717/DEL/2009
Application Type	Convention Application
Date of Filing	April 06, 2009
Assignee	Malikie Innovations Limited
Assignor	BlackBerry Limited
Title of Invention	Auto-Selection of Media Files
Priority Date	May 12, 2008
Publication Date	August 31, 2016
Request for examination	April 06, 2009
FER Issue Date	September 28, 2016
FER Reply Date	December 20, 2016
Hearing Issue Date	July 08, 2019
Hearing Date	July 22, 2019
Written Submission Date	July 29, 2019
Date of Controller’s Decision	September 19, 2019

ORDER PASSED BY THE ASSISTANT CONTROLLER REFUSING THE PATENT APPLICATION

After considering the written submissions filed by the applicant on July 30, 2019, the Assistant Controller passed an order dated September 19, 2019, wherein it was held that as the subject matter of claims 1-2 relates to “algorithm and computer program per se” hence it is non-patentable under Section 3(k) of the Act. Therefore, the application was refused by the Assistant Controller under Section 15 of the Act.

The Assistant Controller cited the following reasons for refusing the patent application.

• The subject matter of claims 1-2 focuses on managing media content via a control selection mechanism designed for enhancing user interaction with multimedia devices. This involves the use of a controller that evaluates a “confidence level” for each media file, termed as a measure of likeability. Paragraph [0039] of the subject patent application explains that the measure of likeability may be derived from a metadata library storing metadata artifacts. The confidence level generation and media files categorization based on the confidence level are non-technical features. These features do not contribute to a technical effect or resolve any technical problem, primarily because they do not control or affect a technical process in a meaningful way.
• The described technology automates the management and organization of media files within a device, supported by a mechanism that chooses the most appropriate files based on storage capacity and confidence levels. However, it raises questions regarding patent eligibility due to its reliance on algorithms and software execution.

APPEAL FILED BY THE APPLICANT

An appeal under the provision of Section 117A of the Patents Act was filed by the applicant (hereinafter referred to as Appellant) before the Intellectual Property Appellate Board (IPAB) on September 28, 2020 against the order passed by the Assistant Controller (hereinafter referred to as Respondent). The appeal was transferred to the Hon’ble Delhi High Court upon the dissolution of the IPAB and, upon the enactment of the Tribunals Reforms Act, 2021.

SUBMISSIONS MADE BY THE LEARNED COUNSEL OF THE APPELLANT DURING THE COURT’S PROCEEDING

• The patent application should be judged based on the prior art that existed on the priority date.
• The corresponding patent application has been granted in the US, China, Japan, and Australia.
• The corresponding patent application has been refused by the European Patent Office on the ground of lack of novelty in respect of the prior art US’765, which was not cited by the Indian Patent Office in the FER and Hearing notice.
• The objection cited by the Learned Controller under Section 3(k) of the Act is entirely unjustifiable as the invention addresses a technical problem by evaluating the available memory on a particular device that is linked to a server and based on the user’s necessities, and the memory available in the device, it downloads the content a device can hold. The invention enables the downloading of different quantities of content on different devices that may be linked to the same server. Thus, the subject patent application discloses a system for managing media contents such as audio, video.
• The present invention revolves around various steps such as the identification of appropriate memory resources where content will be stored or transferred, transferring the content within the available storage capacity, and downloading data in a way that allows for dynamic synchronization.
• The Learned Counsel of the Appellant relied upon the case of Ferid Allani v. Union of India, 2019 SCC OnLine Del 11867, and argued that when the subject invention was assessed against the technological landscape of 2008, the subject invention was patent eligible, primarily because the specific combination of systems and methods presented was not known or utilized at that time.
• The Learned Counsel of the Appellant submitted that the EPO rejected the corresponding EP application bearing application no. 09155841.1 on January 10, 2018, based on lack of novelty, primarily relied on the document D6 US’765. The Learned Counsel further argued that the objection regarding lack of novelty was already waived by the Learned Controller in the impugned order. The Learned Counsel further asserted that observations of EPO with respect to the cited document D6 have been reproduced verbatim in the impugned order without any proper reasoning, although the Indian Patent Office itself did not rely on the cited document D6, which clearly shows non- non-application of mind. Further, the Learned Counsel of the Appellant submits that the sole ground of rejection of the subject patent application pertains to non-patentable subject matter under Section 3(k) of the Indian Patents Act.
• The Learned Counsel emphasized the importance of the technical feature of the subject invention, particularly its capability for dynamic synchronization, which is not available in any cited prior art. The technical effect of the subject invention is evident as it led the Appellant to issue proper promotional material highlighting that more music could be downloaded on Blackberry devices. If the feature claimed in the subject invention is enabled, then more and more music or other content can be downloaded on a device on a live basis and the user gets music through multiple resources which is not possible alone or by combining any of the cited prior arts. This feature of the invention is competent to overcome Section 3(k) of the Act.

RESPONDENT’S SUBMISSION TO THE APPEAL FILED BY THE APPELLANT

The Learned Central Government Standing Counsel (CGSC) along with the Learned Assistant Controller of Patents and Designs (Respondent) submitted the following reasoning for refusing the said patent application.

• The Learned CGSC submitted on behalf of the Respondent that he is not the Controller who examined the patent application and only assisting the Hon’ble Court.
• The Respondent stated that the method disclosed in the patent application is a standard function performed by any generalized computer software and, hence, the patent would not be liable to be granted and would be objected to under Section 3(k) of the Act. Further, the Respondent submitted that the solution does not have a technical effect.
• The Learned CGSC argued that the feature of utilizing multiple resources, which is claimed by the Appellant as a distinguishing characteristic of the invention, is not explicitly listed within the claims of the patent application. He further elaborated that this concern has been previously addressed in both the corresponding European Patent application and the divisional application, where the EPO has reportedly considered the same aspects and determined that the patent application is non-patentable due to a lack of any demonstrable technical effect. To substantiate this point, the learned CGSC references paragraph 17.3.6 of the EPO’s decision dated August 8, 2019, highlighting that the EPO’s prior examination concluded the application did not meet patentability criteria. Consequently, he argued that these considerations raise substantial questions concerning the inventiveness and technical contribution of the subject patent application, therefore, the refusal by the Indian Patent Office is justified.
• The Learned CGSC submitted that the subject matter relates to controlling the selection of media content strengthening user interaction with multimedia devices and auto-filling media files based on available storage in the device. He emphasized that the claims of the subject patent application generates a confidence level for each media file, thereby managing media content within a particular device , described as a measure of likeability. This confidence level is used to select and categorize the media files for downloading and storage management. However, these features are non-technical as they merely categorize and filter media files based on the user preference or available storage, without contributing to any technical effect or solving a technical problem.
• The Learned CGSC further submitted that the subject patent application discloses basic computational tasks which lack novelty and/or inventive technical features such as automatic selection of media files, managing caches, sorting media files on the basis of size and managing available storage in the device. Thus, the patent application is hit by Section 3(k) of the Act and is non-patentable.
• The Learned CGSC submitted that the subject invention claims computer programs in the form of an apparatus for supporting the media file with algorithmic steps. Hence, these instructions are algorithms and computer program “per se”. Hence, the subject matter of claims 1-2 relates to “algorithm and computer program per se” and falls within the provision of section 3(k) of The Patents Act, 1970 (as amended).”

JUDGMENT PASSED BY THE HON’BLE DELHI HIGH COURT

Upon considering contentions from the Appellant and the Respondent, the Hon’ble Court determined that the subject patent application relates to a method and apparatus for media content management. The method appears to emphasize ease of use, allowing for efficient media management with minimal user intervention.

The Hon’ble High Court stated that the system/ apparatus of the subject patent application includes a combination of hardware and software that is used to manage media content such as music, audio, video, presentations, games, etc. The system of the subject patent application includes computer systems, personal computers (PCs) configured with a wireless server, or any other system, that is wirelessly connected to the user’s handheld devices such as mobiles, portable computers, personal digital assistants (PDAs).

The Hon’ble High Court further stated that the subject patent application proposes a system designed for the assessment of the user’s preferences for media content. By tracking the frequency of song playback across a variety of albums, the system can evaluate a deeper understanding of a user’s likes and dislikes. It prioritizes various data forms that are collected from user interactions, facilitating seamless auto-filling of content recommendations that allineate with user preferences. Additionally, the subject patent application addresses the management of media files by allowing certain transfers to remain in a pending status, providing flexibility and control over media organization. The users can browse and sync their media libraries stored on a server or personal computer directly with their handheld communication devices. This approach of user interaction and media management creates a user-oriented experience.

The subject patent application introduces an advanced content management system that facilitates users to remotely view and manage their content libraries effortlessly. It accommodates content transfer through both USB hardware devices and Wi-Fi, thereby enabling users’ flexible access options. The system also facilitates offline access to select media, thereby enhancing usability by providing available content. Additionally, the user’s handheld device facilitates automatic syncing, virtually unlimited storage, and automatic updates.

The Hon’ble High Court cited cases of Ferid Allani v. Union of India & Ors., 2019 SCC OnLine Del, Microsoft Technology Licensing v. Assistant Controller of Patents, Lava International v. TLM Ericsson, 2024:DHC:2698, and Microsoft Technology Licensing LLC v. The Assistant Controller of Patents and Designs, 2024: DHC: 3547, which have significantly contributed to the understanding of what constitutes a patentable invention and what falls under the exclusion of Section 3(k).

The Hon’ble High Court determined that the subject invention cannot be described merely as a computer program or an algorithm and has a technical effect. The subject invention enhances the capacity and the functionality of the device and enabling the device’s operation without any intervention by the user. The Hon’ble High Court stated that Blackberry promoted the subject invention by highlighting the practicality of the product’s effectiveness, and how it enables users to easily sync music, suggesting that consumers can directly experience the benefits of this feature. The promotional material issued by Blackberry could serve as evidence of how they marketed this feature and how it was received by consumers. The High Court was of the view that any invention that can increase the capacity of a device to an extent cannot be excluded from patentability under section 3(k) of the Indian Patents Act. Additionally, the Court noted that the argument presented by the Learned Counsel of the Respondent that the refusal by the European Patent Office (EPO) should consequently lead to the refusal of the subject patent is not reasonable.

The Hon’ble High Court did not concur with the decision of refusal of the corresponding application by EPO on the basis of lack of novelty in view of prior art document US’765 and lack of technical advancement. The Court was of the view that enhancement of the capability of a device to such an extent that the functionality of the device becomes more efficient within the same storage space, is a technical effect and a technical advancement. The Hon’ble High Court was of the view that US’765 shares some characteristics with the subject patent application, however, it ultimately does not negate the novelty of the subject patent application. The methods described in US’765 relate to the automatic selection of multimedia files for transfer based on specific criteria, such as popularity and recency of access. The Hon’ble High Court determined that the document US’765 cited by EPO is just disclosing the first step of the subject patent application. However, the subject patent application expands upon these methods in a significant way, suggesting that it introduces new features, functionalities, or improvements that differentiate it from US’765. Thus, the subject patent application is novel over the cited prior art document US’765.

The Hon’ble High Court explicated the differences in the features of the subject patent application over the prior art US’765.

• The subject patent applications introduce a unified library system that organizes media from multiple sources into a single file for centralized management, while US’765 lacks such a system and focuses on transferring media based on popularity.
• The subject patent application allows for creating library files using only metadata, and reducing file size to enhance the efficiency of browsing and transfer, on the contrary, US’765 primarily addresses full media file transfers without metadata support.
• The subject patent application discloses a cache manager for maintaining and updating device libraries dynamically, which is absent in US’765.
• The subject patent application facilitates remote and local access to media files on mobile devices, thereby enhancing user interaction and browsing abilities, while this feature is not present in US’765.
• The subject patent application facilitates virtually unlimited media storage for better mobile access, while US’765 only discusses basic connectivity without any unlimited storage features.

Therefore, the subject patent application offers various improvements in media organization, file management, user interaction, and efficiency of the system, which distinguishes the subject patent application from the prior art US’765.

The Hon’ble High Court further stated that the subject patent application, while shows similarities to the prior art patent US’765 in focusing on the automatic selection of media files based on user preferences, however, subject patent application introduces several novel features. The subject patent application employs a ‘confidence level’ based on user likeability, as opposed to the ‘popularity weighting’ used in prior art patent document US’765. The subject patent application additionally includes a method for media file categorization using confidence levels, allowing a novel comparison of file sizes to the available storage as a filtering criterion. The subject patent application features a dedicated cache manager that significantly improves system efficiency by updating a list of selected media files, a capability lacking in prior art, specifically US’765. These novel features clearly demonstrate technical advancement over prior arts, contributing to the patent’s novelty and eligibility.

The Hon’ble High Court stated that in the context of subject matter eligibility for patent protection, the discussion in Terrell on the Law of Patents, 19^th Edition (South Asian Edition) explains important criteria for judging the patentability of computer programs that is based on two types of technical advantages. The Court determined two distinct categories of technical advantages, which can be attributed to computer programs, and may be sufficient to establish patentability. The first category is characterized by the program’s capacity to address a problem within the computer system itself. And, another category relates to scenarios wherein the impact of the program is not merely within the computer, but resulting in advantageous outcomes that extend to other devices.

In view of the above, the Hon’ble High Court determined that the features of the subject patent application such as the selection of media files automatically based on file sizes and confidence levels to optimize the storage of the device, managing cache for unifying and updating libraries, synchronization of dynamic media content between devices, efficient media content transfer using metadata for optimizing selected files according to the available storage, virtually unlimited storage for media files, provide technical effects and increase the capacity of the device.

Accordingly, the Hon’ble High Court rejected the objection of non-patentability under section 3(k). Although the Indian Patent Office did not raise any objection to the patent’s novelty, the Hon’ble High Court analysed prior art cited by EPO, specifically US’765, and determined that the subject application still holds merit over prior arts. Further, the Hon’ble High Court allowed the Appellant’s appeal and set aside the order issued by the Respondent, allowing the patent application for grant after making amendments in claims by characterizing the novel features of the subject patent application and limiting the patent scope to the feature of ‘automatic selection’ and ‘updating by a cache manager’. For the issuance of such a decision, the Hon’ble High Court drew support from the decision of the Coordinate Bench in Societe Des Produits Nestle SA v. The Controller of Patents and Designs and Anr., 2023:DHC:0774.

CONCLUSION

The Hon’ble Delhi High Court’s judgment in the case of Blackberry Limited vs The Assistant Controller of Patents brings clarity to section 3(k) of the Indian Patents Act, which historically has posed challenges in the context of software and computer-related inventions. It was concluded from the judgment that any invention relates to an algorithm, software or a computer program, which provides technical effects both within the computer such as optimizing storage, and beyond the computer such as enhancing the capability and functioning of any device which is connected to the computer to make the device more efficient within the same storage is patentable under section 3(k) of the Indian Patents Act. This judgment will set a new precedent, making it mandatory for the Indian Patent Office to carefully analyse the technical advancement offered by the invention and provides a clear path for patenting computer-related inventions.

[1] https://indiankanoon.org/doc/24328013/