By Swaraj Singh Raghuwanshi and Aastha Suri
Introduction
The Computer Related Inventions (CRIs) have become deeply integrated into our daily lives, revolutionizing domains such as, healthcare, communication, defense, travel and entertainment. Patent offices worldwide are adapting to the technological advances that CRIs present, and the Indian Patent Office (IPO) is no exception.
In recent times, several interpretations and judgments by the Indian judicial system, have redefined the techno-legal landscape that decides the patentability of CRIs, particularly in the context of Section 3(k) of the Patents Act, 1970. In August 2024, the Hon’ble Delhi High Court delivered two significant judgments, emphasizing the role of technical effect and technical advancement in evaluating the patentability of such inventions.
Brief Overview of the Matter[1] [2]
| Case number | C.A. (COMM.IPD-PAT) 229/2022 1 | C.A. (COMM.IPD-PAT) 318/2022 2 |
| Application number | 1762/DEL/2008 | 717/DEL/2009 |
| Applicant/ Assignee | Blackberry Limited | Malikie Innovations Limited |
| Date of Filing | 25 July 2008 | 06 April 2009 |
| Title of the Invention | Administration of wireless systems | A method of auto-selecting media files |
| Publication Date | 06 March 2009 | 31 August 2016 |
| FER Issue Date | 28 December 2015 | 28 September 2016 |
| FER Reply Date | 26 April 2016 | 20 December 2016 |
| Hearing Date | 06 August 2019 | 22 July 2019 |
| Written Submission Date | 06 September 2019 | 30 July 2019 |
| Controller’s Order Date | 25 September 2019 | 19 September 2019 |
| Grounds for refusal to grant patent | “the subject application was directed towards sets of instructions and software which were purely functional and lacking any inventive hardware features”1 | “In claims of the instant alleged invention, computer programs are claimed in the form of device for supporting media file with algorithmic steps indicating the function of flow charts or process steps”2 |
| Refusal to grant based on | Section 3(k) | |
The Blackberry Case: When Algorithms Alone Are Not Enough
Background
Blackberry’s (hereinafter referred as “Appellant”) patent application titled “Administration of Wireless Systems” was refused by the Controller of Indian Patent Office (hereinafter referred as “Respondent”) under Section 15, citing Section 3(k) for being directed solely toward functional instructions and software, with no inventive hardware component.
Appellant’s Arguments
The appellant argued that the invention offered a technical solution by managing conflicts among multiple wireless servers, ensuring efficient system performance. The invention prioritized communications from a primary and one or more secondary servers. They contended that the presence of a computer program should not negate the invention’s technical contribution and criticized the Controller for focusing on selective terminology rather than the full specification.
Respondent’s Position
The Respondent maintained that the invention was merely algorithmic in nature and thus fell squarely under non-patentable subject matter as per Section 3(k) of Indian Patent Act, 1970.
Court’s Analysis and Ruling
The Court evaluated two core questions:
- Is the invention merely a sequence of instructions?
- Does it substantively involve only algorithmic processes?
The Court held that the subject matter was ultimately a procedural flow of user actions and automated responses—nothing beyond a typical algorithm. It emphasized that although the invention had practical utility, its contribution stemmed from software instructions managing data flow, which did not meet the threshold of a technical effect required to overcome Section 3(k).
Drawing comparisons with European patent laws, the Court reaffirmed India’s stricter stance and concluded that the invention lacked any inventive step that extended beyond algorithmic logic. As a result, the appeal was dismissed.
Malikie Innovations: When Technical Effect Makes the Difference
Background
The invention by Malikie Innovations (hereinafter referred to as the “Appellant”), whose primary patent portfolio is owned by BlackBerry, pertains to an automated method for selecting media files based on available device memory and user preferences. The application was initially filed with 12 claims before the Indian Patent Office (hereinafter referred to as the “Respondent”). A request for examination was submitted on April 6, 2009, following which the Controller raised objections, stating that the invention lacked novelty, did not involve an inventive step, and fell under the category of non-patentable subject matter as defined in Section 3(k) of the Patents Act, 1970. The Appellant responded to these objections and submitted amended claims. However, the revised claims were still considered non-patentable under Section 3(k), leading the Controller to reject the application under Section 15 of the Act. Dissatisfied with this decision, the Appellant filed an appeal.
Submissions made by the appellant
Appellant argued that the invention improved device functionality and user experience by optimizing media downloads based on available memory and user behavior. The appellant noted that the patent had already been granted in countries like the US, Australia, Japan, and China, and challenged the Respondent’s reliance on a prior EPO decision. They emphasized the technical effect of enabling users to download more music through.
Respondent’s submission
While, the Respondent maintained that the invention was essentially a computer program per se that does not demonstrate any technical advancement and thus non-patentable under Section 3(k) of The Patents Act, 1970 (as amended).
Court findings and judgment passed
Upon analyzing the invention with the prior art US’765, the court stated that the subject matter of the invention is novel and the technical advancement of the invention is evident through the technical step involving the cache manager and the specific categorization and filtering process. The court examined the technical nature of the invention, focusing on its ability to enhance device capabilities and efficiency.
Referencing Terrell on the Law of Patents, the Court concluded that the invention produced a technical effect both within and outside the computing system, improving media accessibility and optimizing mobile device performance. It held that the invention was not merely a software implementation but a technical solution to a real-world problem.
Hence, making the subject matter of the claims exempted from Section 3(k) of the Patents Act, 1970. The court directed the Appellant to further ament the claims to characterize the technical features, allowing the application to proceed to grant. Thus, the appeal was allowed, and the patent application proceeded for grant. [1]
Conclusion
The Delhi High Court’s contrasting judgments in these two cases underscore the pivotal role of technical effect in assessing the patentability of CRIs under Section 3(k) of the Patents Act, 1970. While the Blackberry application failed due to its algorithmic nature without a demonstrable technical advancement, the Malikie Innovations case succeeded by showing a tangible improvement in device functionality.
These rulings provide clearer judicial guidance on CRI patentability in India. They also highlight that demonstrating a technical effect, not just novelty or functionality is key to overcoming Section 3(k) objections. This evolving jurisprudence may pave the way for a more consistent and innovation-friendly CRI patenting framework in India.
[1]1. https://indiankanoon.org/doc/50904559/
2. https://indiankanoon.org/doc/24328013/