Inventive Step:
In the dynamic intersection of technology and law, a recent legal battle between Microsoft Technology Licensing, LLC, and the Assistant Controller of Patents and Designs has unveiled the complexities surrounding Section 3(k) of the Patent Act, 1970. The case, C.A.(COMM.IPD-PAT) 29/2022, brought forth by Microsoft before the Delhi High Court, sheds light on the interpretation of the phrase “computer program per se” and its implications on patentability. Rendered by Hon’ble Mr. Justice Sanjeev Narula of the Delhi High Court, the judgment not only addresses the specific case but also delves into the historical evolution of Section 3(k) and its impact on software-related inventions in India.
The Controversy Unveiled:
Microsoft’s patent application (No. 1373/DEL/2003) aimed to enhance user authentication within a network, particularly focusing on sub-locations. However, the Patent Office raised objections, citing lack of novelty, inventive steps, and non-patentability under Section 3(k). The ensuing legal battle showcased Microsoft’s assertion that the rejection order was non-speaking, unreasoned, and violated the principles of natural justice.
Contentions of the Parties:
Microsoft, represented by counsel Ms. Vindhya S. Mani, argued against the order’s interpretation of Section 3(k), emphasizing the technical contributions of the patented invention. In contrast, Mr. Harish Vaidyanathan Shankar, representing the Respondent, contended that the invention was merely an algorithm implemented by a computer program per se, falling within the non-patentable ambit of Section 3(k).
The Subject Patent:
Microsoft’s patent aimed to secure user authentication through a two-tier process involving cookies, addressing security risks associated with unauthorized access to network sub-locations. The Assistant Controller’s rejection was rooted in the classification of the invention as a “computer program per se” under Section 3(k). The order argued that the inventive step lay in non-patentable subject matter, specifically computer executable instructions on a general-purpose computing device.
Tracing the Evolution of Section 3(k):
The judgment conducted a comprehensive analysis of the historical evolution of Section 3(k), tracing its roots from the Patents Bill of 1953 to the Patents Bill of 1965. The legislative intent behind excluding certain inventions from patentability was explored to shed light on the interpretation of “computer program per se.”
Beyond the specific case, India’s journey in shaping patent laws, particularly concerning computer programs, has witnessed significant developments. Originating from the Patents Bill of 1965, subsequent amendments reflect the changing landscape of technology and global intellectual property standards.
The Patents Act of 1970 outlined non-patentable inventions, explicitly excluding certain categories like frivolous claims and inventions against morality. Section 3(k), added in 2002, excluded “computer programs per se” from patentability. The influence of the TRIPS Agreement in 1995 prompted amendments, and the Patents (Amendment) Act, 2002, added “per se” to Section 3(k), specifically excluding “computer programs per se” from patentability.
The Patents (Amendment) Act, 2005 endorsed the “technical contribution” approach for computer-related inventions, allowing patenting for software-related inventions with technical applications or in combination with hardware.
Contemporary Challenges and AI Inventions:
Recent discussions in parliamentary committees highlight the need for clear definitions, particularly of “per se” under Section 3(k). Furthermore, there is a call to revisit patent and copyright acts to accommodate inventions by Artificial Intelligence, showcasing the ongoing challenges in adapting patent laws to emerging technologies.
The Delhi High Court’s recent landmark judgment clarifies the criteria for patenting Computer-Related Inventions (CRIs). The decision has significant implications for the interpretation of Section 3(k) of the Patents Act, particularly concerning the patent eligibility of inventions related to computer programs. The court traced the legislative history of Section 3(k) and highlighted the 2005 amendment, emphasizing the need for a clear definition of “per se” to distinguish patentable CRIs. The examination of guidelines issued by the Patent Office in 2013, 2015, 2016, and 2017 revealed inconsistencies in evaluating CRIs, prompting concerns raised by Microsoft.
Decision of the Court:
The court dismissed the Patent Office’s rejection of Microsoft’s patent application, emphasizing that the technical solution provided by the invention went beyond mere user-interface improvements. The court directed the Patent Office to re-examine the patent application, considering objections related to novelty and inventive step. In its postscript, the court urged the Indian Patent Office to adopt a more comprehensive approach, assessing CRIs based on technical effects and contributions rather than solely focusing on algorithm implementation. This landmark judgment provides clarity on the patentability of CRIs, stressing the need for a balanced and comprehensive evaluation and setting a precedent for patent examination in the rapidly evolving field of technology.
Conclusion:
The Microsoft patent battle and the evolution of software patent laws in India underscore the ongoing challenges in defining patent boundaries amidst rapidly evolving technologies. The interplay of legal and technological landscapes will continue to be a focal point for future legal disputes and policy considerations, emphasizing the need for a nuanced and adaptive approach to patent laws. As technology advances, so must the legal frameworks that govern it.
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