The case of Ferid Allani vs. Assistant Controller of Patents discusses an important perspective with regards to the scope and applicability of Section 3(k) of the Patents Act. Section 3(k) denotes that the inventions which are mathematical or business methods or a computer program per se cannot be patented. The patent application was a computer-related invention which was titled “Method and device for accessing information sources and services of the web”.  The objective of the invention is to provide easy, quick, and direct access to required sources and services on the internet (web) without wasting precious network resources, such as bandwidth.

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The timeline associated with the case

Ferid Allani, the applicant and the plaintiff patent application on 30.12.1999 in France, and the number were 99/16704. Thereafter, a PCT application was filed on 29.12.2000 (PCT/FR2000/003759) and it entered India as IN/PCT/2002/00705/DEL on 17.07.2002. Gradually, the applicant got the first objection pertaining to Section 2(1) (j) of the patents act. This section specifies that an invention must have inventive steps and must be capable of industrial applicability. The applicant received the second examination report raising objection with regards to section 3(k) of the patents. Meanwhile, the response was not filed and the application was deemed to be abandoned. Thereafter the applicant was allowed to give the submission on the direction of the High Court. Nevertheless, the patent office refused the application and even IPAB refused in appeal stating that the invention does not show any such technological advancement. Then the applicant filed a writ petition in the Delhi High Court in 2013 stating that the invention is more than a mere software that is loaded onto the computer and the application does disclose a technical effect and technical advancement. Interestingly, the DHC directed the patent office to re-examine the patent. The patent office rejected but the IPAB finally grant the patent months before the expiry of the patent.

Analysis

The basic issue with this case is with regards to the applicability and scope of Section 3(k) of the act. Eventually, this case also throws much light for the inventive steps. The applicant clearly states that the aforementioned goal of the claimed invention is achieved in a way that is quicker and easier to use than the methods known at the time of invention. The invention has provided a new technological advancement in providing a more efficient search strategy. The applicant contended that the normal search will provide the result whereas the search with this software will comprise a mix of links to web pages, images, videos, infographics, articles, research papers, and other types of files.

The court in terms of section 3(k) interpreted the word per se in the section. The addition of per se in the section denotes that there cannot be a complete objection to the computer-related invention. It ensured that genuine inventions that are developed based on computer programs are not refused patent. Also, the court delved into the Report of the Joint Committee on Patents (Second Amendment) Bill, 1999 stating the similarity of the said provision of the computer-related invention with that of Article 52 of the European Patent Convention which greatly emphasized: “technical effect” and “technical contribution” for determination of the patentability. The court agreed that the present invention touched upon the aspects of technical advantage and shows the technical effect. The court also reiterated the Computer-related inventions guidelines of 2013 and relied upon the indicator to technical effect. It is higher speed, reduced hard-disk access time, more economical use of memory, more efficient database search strategy, more effective data compression techniques, improved user interface, better control of the robotic arm, improved reception/transmission of a radio signal”. The present invention falls under the domain area of higher speed, more economical use of memory, and more efficient database search strategy.

The IPAB also relied upon this technical contribution of the invention. The invention reduces the time duration and also provides more efficient results as compared to the normal ones. Hence the IPAB granted the patent. This case is an example of those inventions which are associated with computer-related inventions. It becomes clear that being a computer-generated invention is not a bar for patentability. Without appreciating the technical effect produced by the present invention, the mere fact that a computer program is used for effectuating a part of the present invention, will not invite the scope of Section 3(k).

Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur).  In case of any queries please contact/write back to us at support@globalpatentfiling.com.