Beyond the computer program itself – Elements of computer programs that are not excluded under Section 3 (k) – Intellectual property

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In the modern global patent system, due to great advances in innovation and technology, the subject matter of claims becomes more complex. An inadequate understanding of a particular topic and the absence of clear government regulations undermine legal certainty and have serious consequences for the level of intellectual property protection. One of these subjects is computer related invention.

In order to regulate and harmonize the practice of examining computer-related inventions (CRI), the CGPDTM issued CRI guidelines in 2013 and revised the guidelines in 2017. It is not surprising that the exclusions under Section 3 (k) of the Patent Act, 1970 be supported by the legislative intent expressed in the report of the Joint Committee on Patents (Second Amendment) with the addition of “Per se” after the term computer program to leave enough room to authorize patents for computer inventions. Hon’ble Delhi High Court via order WP (C) 7/2014 & CM APPL. 40736/2019 of 12 December 2020 reiterates this point as follows:

“10. The addition of the words ‘per se’ in section 3 (k) was a deliberate step and the report of the Joint Committee on the Patent Bill (Second Amendment), 19991 specifically records the reasons for the addition of this term in the final statute under:

In the proposed new paragraph (k), the words “per se” have been inserted. This change was … The amendment was moved to clarify the purpose. “

Last year, in a rapid turn of events, clouds of uncertainty over the type of inventions excluded in the sub-category of section 3 (k), i.e. the computer program in se of the Patent Act of 1970, had been eliminated by the Intellectual Property Appeal Board (IPAB), whose body is now dissolved in Ferid Allani’s patent application for “a method and device of ‘access to information sources and services on the web “. The IPAB had allowed the new appeal and found the application eligible for the patent. [OA/17/2020/PT/DEL]Previously, setting aside the refusal order in a motion for brief, the Delhi High Court remitted the case for reconsideration by the Comptroller with an emphatic instruction to examine the invention as a whole and the patent application deserves to be examined in the context of established court precedents which have now filed the Section 3 (k) interpretation, guidelines and other documents, including legislative documents. The Delhi High Court also ruled that the patentability of a patented invention is tested on the basis of “technical effect “and” technical contributionIf the invention demonstrates a “technical effect” or a “technical contribution”, it is patentable even though it may be based on a computer program. [W.P. (C) 7/2014 & CM APPL. 40736/2019
dated December 12th, 2020]

Even the IBAB through Ordinance OA / 17/2020 / PT / DEL stressed the importance of the inclusion of the word “Per Se” and recognized that the authentic invention that emerged with the contribution of a program IT should not be denied. These observations clearly distinguish between the term “computer program” and “computer program per se” and, therefore, the program which makes a significant contribution to the improvement of a particular technology should not be unnecessarily extended to cover all. aspects of the program covered by the exclusion. For example, an invention to provide automatic lip synchronization and expression to an animated character using a computer program should be eligible for the patent because the invention provides a significant improvement in computer technology.

When Ferid Allani’s patent application above was referred to the Controller by the Delhi High Court via Order WP (C) 7/2014 & CM APPL. 40736/2019 dated December 12, 2020, the Monitor considered and rejected the request on the grounds of Article 2 (1) (j) and Article 3 (k). When the said order was challenged before the IPAB, the IPAB reaffirmed the criterion of “technical effect” and “technical contribution” established by the High Court of Delhi and held that the important consideration that the examiner must consider when examining a computer-related invention is whether the underlying substance of the claim produces a technical effect and a technical contribution in a particular technology, regardless of the fact that the computer program has been used to implement part of the invention. In other words, it can be concluded that the IPAB highlights the importance of other elements present in the claim in addition to the computer program.

Paragraph 39 of Ordinance OA / 17/2020 / PT / DEL “…
Therefore, without appreciating the technical effect produced by the present invention, as explained above, the mere fact that a computer program is used to perform a part of the present invention, does not constitute an obstacle to patentability. Thus, the invention MUST be considered as a whole and the following factors must be taken into account when deciding on the patentability of such inventions – i.e. (i) the technical effect obtained by it, and its (ii) technical contribution. “

It is interesting to note that the IPAB, in the same order, took into account the 2013 guidelines on computer-related inventions to list some examples of technical effects such as higher speed, dwell time. ‘reduced hard disk access, more economical memory usage, more efficient database search strategy, more efficient data. compression techniques, improved user interface, better control of the robotic arm, improved reception / transmission of a radio signal, etc. claim as a whole while considering the patent eligibility of the claimed subject matter. The corollary of which would be that even if a computer program is used to carry out a part of the present invention, it would not prevent the patentability of the claimed invention as long as it provides a technical effect and has a technical contribution. Thus, it is not advisable to divide a claim into two parts, ignoring the contribution of the computer program which brings a technical effect, while considering the patentability of CRI inventions under section 3 (k). This IPAB ordinance now streamlines the examination of the exam to focus on examining the subject as a whole on the pivot of technical effect and technical contribution when examining a computer-related invention.

Justification of the patentability of a computer program which goes beyond “per se”:

From the above, it is clear that the legislative intention with respect to the patentability of computer programs was to proscribe computer programs which are “per se” computer programs. In one approach, the computer program can be viewed as a combination of literary art which is protected by copyright and certain functional elements of a technical nature. Although filtering copyrighted art from the entire computer program is a difficult proposition, however, if achieved, the output will be that of parts of the computer program, that is – say the functional element having a technical nature. Now if this filtered functional element brings “additional technical effect“that is, beyond the normal technical effect obtained by the normal interaction of the computer program with the associated hardware, then that part of the computer program is beyond the computer program” per se ” and deserves patent protection. Thus, the justification for the patentability of the computer program lies in its ability to provide “additional technical effect“in any invention related to computer science.


The aforementioned Ordinance has certainly, to some extent, dispelled the fog of uncertainty surrounding the patent eligibility of computer program-related inventions. We have also found that IPAB’s Ferid Allani order has a positive impact in a hearing before patent supervisors. Now software developers can see a cash line from the possibility of obtaining patents on inventions based on computer programs that go beyond the simple preparation of software. Indian courts are aware of recent developments in technology and the legislative intention to allow patents on such inventions.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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