A resident of Tunisia filed a patent application on 17th July 2002 seeking grant of a patent for a “method and device for accessing information sources and services on the web”. The claim specifically consisted of both method claims and device claims. The Patent Office claimed lack of novelty and patentability as objections under sections 2(1)(j) and 3(k) were raised. Upon amending the application, the objection with respect to section 3(k) remained as thus Patent Office. A writ petition was filed in Delhi High Court, which on 25th February 2008 directed the Patent’s Office to give reasons for rejection of the patent application. The Patent’s Office again rejected the application in an order stating that claims 1-8 did not constitute as patentable innovation as defined in section 3(k) of Patent Acts, 1970 and claims 9-14 lacked novelty. The Petitioner appealed before the IPAB challenging the said rejection order. The appeal was also dismissed by the IPAB and upheld the rejection order. In response to the petitioner filed a Writ Petition in Delhi High Court. The Petitioner’s counsel placed reliance upon various parts of patent specification disclosing the existence of a technical effect and technical advancement and since the patent requires a certain way of implementation, the rejection was not correct. Ld. Counsel for the Petitioner also stated that the invention which would allow the user more efficient database search strategies, more economical use of memory or higher speed, etc., would constitute “technical effect” and thus its rejection is not per the law. Whereas ld. CGSC argued that the technical arguments had been taken into account by the IPAB and thus the Court must not re-appreciate technical arguments.
The High Court of Delhi observed:
“Section 3(k) has a long legislative history and various judicial decisions have also interpreted this provision. The bar on patenting is in respect of `computer programs per se….’ and not all inventions based on computer programs. In today’s digital world, when most inventions are based on computer programs, it would be retrograde to argue that all such inventions would not be patentable. Innovation in the field of artificial intelligence, blockchain technologies and other digital products would be based on computer programs; however, the same would not become non- patentable inventions – simply for that reason. It is rare to see a product that is not based on a computer program. Whether they are cars and other automobiles, microwave ovens, washing machines, refrigerators, they all have some sort of computer programs in-built in them. Thus, the effect that such programs produce including in digital and electronic products is crucial in determining the test of patentability.”
Delhi High Court also observed that patent applications in technical field have to be examined to see if they result in a ‘technical contribution’. It also observed that across the world, patent offices test patent application in a technical field based on their ‘technical effect’ and/or ‘technical contribution’. If it is either of the two then the invention qualifies as patentable even if it is based on a computer program. After hearing and considering arguments from both the parties, Delhi High Court directed the patent application to be reconsidered and re-examined by the Patent’s Office. It also directed that a decision on the patent shall be taken within two months from the date of the order.
This order clarified how technical patent applications need to be examined for novelty and how section 3(k) of Patent Acts needs to be understood in respect of such technical patent applications.
