Delhi High Court clarifies that a computer program that has a “Technical Contribution” is patentable under the Patents Act, 1970 – Eshwars
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Delhi High Court clarifies that a computer program that has a “Technical Contribution” is patentable under the Patents Act, 1970

Author: N.V.Saisunder
 
Recently in December 2019, the Delhi High Court confirmed vide its order that not all Computer Programs are hit by the bar on patenting under the provisions of Section 3 (k) of the Indian Patents Act, 1970 (the “Act”), where such computer programs demonstrate a technical effect or technical contribution. Section 3 of the Act enlists the various matters that are not construed to be an invention within the meaning of the Act and specifically Section (k) states that- a mathematical or business method or a computer programme per se or algorithms”, is not patentable under the Act.
 
The brief background in this matter is that the petitioner was a national of Tunisia and had filed a patent application seeking grant of patent for a “method and device for accessing information sources and services on the web”. The claims in the patent consisted of both method claims and device claims. The application was refused by the Patent Office inter-alia on the grounds that some claims were hit by the provisions of Section 3(k) of the Act and that the other claims lacked novelty. An appeal before the IPAB was also dismissed and the IPAB opined that the patent application did not disclose any ‘technical effect’ or ‘technical advancement’ and hence does not qualify for a grant of patent under the Act. Based on the above rejections, the Petitioner moved the High Court and argued that his patent application was an invention within the meaning of the Act and that it advanced an efficient database search strategy, more economical use of memory etc. It was contended that this constituted the “technical effect” and hence the rejection of the patent by the Patent Office and the IPAB was in contravention to the law and the relevant guidelines.
 
While passing its order the Hon’ble High Court noted that the bar on patenting was in respect of `computer programs per se….’ and not on all inventions which were based on computer programs. The court further observed that:
 
“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 nonpatentable inventions – simply for that reason. Thus, the effect that such programs produce including in digital and electronic products is crucial in determining the test of patentability.”
 
Accordingly, it stated that the patent applications in the field of computer programs would have to be examined in a manner to see if they result in any ‘technical contribution’.
 
The Court further clarified that the words ‘per se’ were incorporated in Section 3 (k) to ensure that genuine inventions in the field of computer programs are not refused patents. Based on the above ratio, the Court directed the Patent Office to re-examine the Petitioner’s application in the light of the present order, various judicial precedents, practices of patent offices as well as the Guidelines on Computer Related Inventions. It will be interesting to see how the Patent Office continues to examine patent applications made in respect of Computer Related Inventions (CRI’s) in India and its effect on Open Source Software Lobbyists across the globe.

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