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MICROSOFT TECHNOLOGY LICENSING V.​THE ASSISTANT CONTROLLER OF PATENTS AND DESIGNS

THE HIGH COURT OF DELHI​

MICROSOFT TECHNOLOGY LICENSING as Appellant v/s ​

THE ASSISTANT CONTROLLER OF PATENTS AND DESIGNS as Respondent ​

Dated - 15th MAY 2023​

 

FACTS OF THE CASE

  • The appeal is focused on the controversy surrounding the interpretation of the phrase “computer program per se” in the exclusionary Section 3(k) of the Patent Act, 1970 [“the Act”].​

  • The Appellant filed a patent in India for an invention relating to methods and systems for authentication of a user for sub-locations of a network location in 2003.​

  • Vide an order dated 11th April, 2019, the same was rejected by the Respondent, inter alia on the ground that the ‘claimed invention’ is merely an ‘algorithm’ which, by definition, are a set of rules to be followed, which are implemented on a computer program per se, and hence, the subject invention is non-patentable in accordance with Section 3(k) of the Act.​


LEGISLATIVE HISTORY​

  • ​In 2005, the Parliament passed Statement of Objects and Reason to Patents (Amendment) Act, 2005 which endorsed the ‘technical contribution’ approach for patentability of computer-related inventions [CRI] . ​

  • The Statement of Objects and Reasons states one of the objects as :​ QUOTE​ [iii] to modify and clarify the provisions relating to patenting of software related inventions when they have technical application to industry or in combination with hardware In other words, if a computer program is used in conjunction with a hardware or results in technical effect/solves a technical problem, it may be eligible for patent protection.” UNQUOTE​

ORDER

  • The Delhi High Court allowed the Petition of the Appellant and directed that the Appellants’ patent application be re-examined on objections regarding lack of novelty and inventive step be taken in view of the prior arts cited in the judgement. It also directed the Patent Officer to take into consideration, inter alia, the judicial precedents, including the guidelines issued for the examinations of the CRIs. ​

  • It observed that the rejection of the original application stemmed from mis-interpretation of Sec 3 (k) of the Act and an oversight of technical effect and contribution of the claimed invention, resulting in erroneous determination that the subject patent constitutes ‘computer program per se. ​

  • It further directed that the decision on the subject of the patent be taken within one (1) month from date of the order as the patent would be ending in November 2023.


WAYS It is the need of the hour that the CRIs [Computer related invention] be assessed with a comprehensive approach . It is vital that the contribution and technical effects of a CRI be taken into consideration, rather than solely focusing on the implementation of algorithms and computer-executable instructions. An algorithm should not be deemed to be a computer program per se rather it should be assessed based on improvement to the quality of life it offers and its practical application in solving real world problems. ​ ​


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