Refusal under section 3(k) set aside. The claimed invention was held not to be a computer programme per se or an algorithm: it involves technical considerations, achieved by technical means and implemented on a computer using hardware such as processors and search engines, and so cannot be characterised as solely linguistic or semantic. The Controller had recorded that section 2(1)(j) was satisfied and had rejected the application on section 3(k) alone, so that conclusion removed the only ground of refusal. The matter was nevertheless remanded on a narrow point: the claims were too wide, not limited to any specific normalisation or matching process, so a patent as claimed would monopolise any method of normalising, matching and retrieving database records by similarity of search queries.
Appeal dismissed and a refusal under section 3(k) upheld, which makes this a useful counterpoint to the computer-related inventions that have succeeded. The claimed invention merely enabled a keyword search within a peer-to-peer network, which the Court held reflects conventional computer programme behaviour and does not enhance the functionality of the hardware, while the profiling aspect using keyword lists to locate particular types of user or data was abstract and lacked technical character. Claims 1 to 7 were therefore a computer programme per se and claims 8 to 10 algorithms. The Court applied the reasoning in Blackberry, distinguished Lava and Microsoft, and declined to examine the separate objection under section 2(1)(j) having upheld the refusal under section 3(k).
Three suits on the DVD standard essential patent decreed and all counter-claims dismissed. The revocation grounds failed: section 64(1)(m) on non-disclosure of corresponding foreign applications under section 8, section 64(1)(e) on prior public knowledge and use, and section 64(1)(j) on suppression and fraud across the parent and divisional applications. Damages were awarded, including additional damages of one crore rupees against two defendants, with full commercial costs on the Uflex principle. The Court recorded that the defendants had altered their defences at different stages and used delay until the patent lapsed, which reduced the patentee to monetary relief alone. A certificate of validity was directed under section 113.
Refusal of a cryptography application under section 3(k) quashed as a non-speaking order and for breach of natural justice. One of the grounds given was the adoption of a business method, which was supported by no reasoning and, more seriously, had never been mentioned in the hearing notice, so the applicant had no chance to answer it. On the other ground, the adoption of algorithms, the Controller failed to engage with the applicant's case that the invention is not a set of rules and so is not an algorithm within the definition in the 2017 Guidelines for Examination of Computer Related Inventions. The exceptions in the Indian and European guidelines on which the applicant relied, including that exclusions may not apply to inventions resulting in systems for encrypting or decrypting electronic communications, were not considered at all.
Appeal dismissed and the refusal under section 3(k) upheld. The Court held that where an invention relates purely to a set of instructions or policies determining the flow of data, without any substantial change in hardware, it is not patentable even though it bears on how data flows; but where algorithmic instructions are implemented through software coded for the purpose and produce a technical effect or contribution, the test applicable to computer software applies and the inventive feature must be the implementation rather than the algorithm. Here the policy agent, communication policies and interoperating instructions amounted to conditional logic and procedural steps, so the technical contribution arose from the algorithm and nothing more. The Court added that the part of the Controller's order requiring inventive hardware features was not in accordance with law, and distinguished the EPO decision in Vicom because the qualifier as such for mathematical methods has no equivalent in India.
Section 3(k) objection rejected and the patent directed to proceed to grant, as amended. Drawing on Terrell on the Law of Patents, the Court accepted that two kinds of technical advantage attributable to a computer program suffice: where the program solves a problem within the computer itself, and where its beneficial consequences feed into other devices. A technical innovation, whether within or outside the computer, will normally suffice. Here cache management unifying and updating libraries, metadata-only library files for efficient transfer and dynamic media synchronisation produced effects both within the computer, in optimised storage and retrieval, and beyond it, in the functioning of mobile devices and the accessibility of media. No objection to novelty or inventive step had been taken by the Patent Office, but the Court examined the European prior art for completeness and found that it did disclose selecting media files for transfer on criteria such as popularity weighting and recency of access. Rather than refuse or remand, the Court directed the claims be recharacterised so that the confidence-level feature stands as the prior art over which automatic selection and updating by a cache manager are the novel advance, and set out the rewritten claim in the judgment.
A section 3(k) refusal was set aside for applying the discarded novel hardware test: the claims were rejected because the only hardware disclosed was a general purpose processor, memory and computing device, without applying the settled requirement of a specific and credible technical effect beyond ordinary computing. The algorithm ground was taken without any opportunity to respond, and the inventive step finding was an extract of the prior art followed by a conclusion.
A device claim is not caught by section 3(k) merely because the device uses a computer program to process and display data. The claim was to a parameter display system fitted in a working vehicle, recording data to memory and displaying it, and the application lay in mechanical engineering rather than in computing or mathematics. The same invention had been granted in Japan under a classification for engine controls, which the Controller never considered.
Section 3(k) covers totally different things, so a Controller refusing under it must narrow the reasoning down to the part he is applying. The hearing notice said the claims were a computer program and a computer implementable method; the order abandoned that objection and concluded the subject matter was mathematical or statistical, depriving the applicant of a fair opportunity to answer.
The order held the invention to lack an inventive step without discussing the cited document at all, and concluded that both section 2(1)(ja) and section 3(k) stood in the way of grant without any reasons substantiating that decision. The applicant was given liberty on remand to put further submissions beyond those already before the Controller.
Refusal under section 3(k) set aside and grant directed. Following Lava International v. Telefonaktiebolaget LM Ericsson, inventions solely directed to algorithms, mathematical methods, business methods or computer programmes per se are not patentable, but an invention that merely incorporates such elements within a method or system and otherwise satisfies the criteria is not inherently non-patentable: where the algorithms are directed at enhancing the functionality of a system or hardware component, that effect is patentable subject matter even though the algorithm itself is not. Implementation on a general-purpose computer that produces a further technical effect improving the system's functionality cannot be refused as a computer programme per se, which is the point of the qualifier introduced in 2002. To escape the exclusion the applicant must show that the overall method and system contribute directly to a specific and credible technical effect beyond mere general computing. Here the claims integrated reversible overlap operators and block transforms into a processor and data storage buffer performing digital media compression, transforming general-purpose hardware into a specialised apparatus capable of efficient and reversible compression.
Where the Controller holds that the subject matter is not an invention at all, he cannot derive a want-of-novelty objection from the same reasoning: to invoke that provision he must first acknowledge that there is an invention, which then fails the tests of patentability. With the 2017 Guidelines the software objection had gone as well, and the Court directed the patent to be granted.
Refusal under sections 2(1)(j) and 3(k) set aside. The Controller applied the novel hardware requirement drawn from the 2016 CRI Guidelines, which the 2017 Guidelines had already replaced, and overlooked that claim 1 itself recited at least one processor. On novelty, the order asserted that identified paragraphs of the cited document dealt with a scrambling sequence, which the Court could not find in them at all.
The Controller made lack of clarity under section 10(4) the denominator into which he fitted his objections under sections 2(1)(j) and 3(k), saying that for want of clarity he could not appreciate the claim against them, but he cannot do that. The order also showed that he had not adequately updated himself on the Computer Related Invention Guidelines, 2017.
Refusal under sections 3(k) and 59 set aside for want of a speaking order. The order ran to eleven pages but reached its conclusions in two paragraphs of four or five lines, and never engaged the tabulation filed by the applicant showing that the amended claims fell within the scope of the original specification. On section 3(k) the Controller had fixed on the computer system as such rather than on the microprocessor the applicant had developed, the invention being a combination of hardware and software. The Court held that every Controller must understand they are there primarily to support an invention, and owe the inventor an explanation of why and how an invention could not be patented; because the decision is subject to statutory appeal, it is all the more necessary that orders be speaking orders.
Refusal set aside where the Controller had cited the applicants' own earlier, withdrawn application as prior art D1 under section 13(1)(b). The earlier application had been withdrawn well within the period allowed by section 11A(3)(c) read with Rule 24, so it should never have been published at all, and the later filing of Forms 9 and 18A for it was both out of time and incapable of reviving a withdrawn application. The Patent Office ought to have sought clarification as to which application was to be processed. Applying actus curiae neminem gravabit, which binds every statutory authority deciding the rights of a citizen, an innocent party cannot suffer for the error of a quasi-judicial body, so the publication and citation of D1 were invalid and the novelty and inventive step objections founded on it could not stand. On section 3(k) the invention combined hardware and software with a visible technical advancement under the 2017 Guidelines for Examination of Computer Related Inventions, so the objection did not apply. Remaining objections as to clarity and breadth were formal and curable.
Refusal under sections 2(1)(ja), 3(k), 10(4) and 59 set aside on all four grounds. Section 3(k) appeared for the first time in the order itself, never in the First Examination Report or the hearing notice, so the applicant had no opportunity to meet it. The cited prior art addressed different problems, and the final amendment filed with the written submissions had already taken the claims outside section 59.
The Patent Office missed the signposts and travelled backward in time, relying on what the 2016 Guidelines provided although the order referred to the 2017 Guidelines. The test is whether the computer related invention involves a technical effect or a technical contribution, independently of any hardware. The order's complaint that the programs had no further technical effect going beyond the normal interactions between the program and general purpose hardware was the discarded standard in another form.
A refusal under section 3(k) as a business method was set aside. The claims were for concealing a purchaser's physical address in e-commerce transactions by deploying software, hardware and firmware for data privacy and protection, and although using the invention might form part of an enterprise's business method, the monopoly claimed was not in respect of a business method. Under paragraph 4.5.2 of the 2017 CRI Guidelines a claim is a business method only if it is one in substance.
Refusal set aside on both grounds and the application remanded. On inventive step the order had listed features said to be common to two prior art documents and the independent claim and then concluded that combining their teachings would be obvious, without cogent reasons, and without taking into account that the European Patent Office had granted a patent on the same prior art. The Court held that a foreign grant on the same art, while neither conclusive nor dispositive, is a material consideration. On section 3(k) the order had recorded that the claims involve no technical contribution and are merely a computer programme stored in the memory of a general purpose computer, again without reasoning and without engaging with the CRI guidelines or with Ferid Allani and the Delhi Microsoft judgment on the meaning of the words per se.
Refusal under section 3(k) and for want of inventive step set aside because the Controller applied the superseded 2016 Computer Related Inventions Guidelines instead of the Revised Guidelines of 2017. The requirement of novel hardware existed only in the 2016 Guidelines and is a higher standard with no basis in law. The correct question is whether the invention makes a technical contribution or produces a technical effect, here whether the system reduces the time taken to schedule job execution in a high-performance computing system. Following Microsoft Technology Licensing, examiners must analyse the substance of the invention rather than the form of the claims and take the claims as a whole, which clause 4.4.4 of the 2017 Guidelines itself underscores. The words per se in section 3(k) were inserted deliberately, as the Report of the Joint Committee on the Patents (Second Amendment) Bill records, so that genuine inventions developed on computer programs are not refused, a position similar to Article 52 of the European Patent Convention.
A section 3(k) refusal was set aside on an arithmetical tell: the order recited the examiner's observations on claims 11 to 14 when only eleven amended claims had been filed, so those claims no longer existed and the amended set had plainly never been looked at. Beyond recording the conclusion that section 3(k) was not complied with, the Controller never dealt with the response to the First Examination Report or with the submissions on the scope of the provision.
Refusal of a divisional application under sections 16(1), 16(3) and 3(k) set aside. On section 16 the Court held that claims define the extent of protection, so even where the foundational teachings appear similar it is the specific framing and content of the claims that differentiates one invention from another. The parent application was method-centric, explaining how the thing is done, while the divisional was system-centric, describing what the system does, so the divisional claims were not mere reiterations. Section 16 permits voluntary filing of a divisional where the claims of the parent relate to more than one invention, and Boehringer did not dispute that right but only clarified when such an application is valid. The Controller also wrongly objected to the conversion of method claims into system claims: at the pre-grant stage, governed by section 59(1), such a transition is permissible where it is encompassed within the complete specification. On section 3(k) the order said only that the claimed matter was a computer program per se stored in a computer readable medium, which is devoid of reasoning, the reasons for rejection having to be clearly discernible from the order.
Refusal under sections 3(k) and 10 set aside. The order recorded that responses had been filed to the objections and that the applicant had been heard, but made no reference to the contents of those submissions and returned no finding on their merits, the Deputy Controller simply noting his entire agreement with the Examiner and giving no reasons for it. An order which does not deal with the submissions advanced before the authority passing it suffers from manifest non-application of mind and is ex facie unreasoned, and cannot sustain in law or on facts. Such orders reduce the examination of the application, the raising of objections and the opportunity to respond to an empty paper formality. The order also returned a finding on a claim that the applicant had already withdrawn on amendment, instead of addressing the claims that survived.
Appeal allowed, the refusal under section 3(k) set aside and the application remanded for examination on novelty and inventive step. An invention is not a computer programme per se merely because it is implemented as algorithms and computer-executable instructions on a general purpose computing device. What matters is whether it delivers a technical effect or contribution. The claimed two-cookie authentication, one for the network location and another for the sub-location, improved security against cookie theft and so cleared section 3(k). The Patent Office's argument that the invention was at user-interface level was rejected both because it did not appear in the impugned order and because the technical contribution went deeper than the interface. The judgment closes with a postscript urging the Patent Office to assess computer related inventions on technical advancement rather than on the presence of algorithms.
Allowed and the refusal under section 3(k) quashed. The court held that a computer programme may qualify for patent protection where it shows a technical contribution to the field or delivers a discernible technical effect, and that the Controller had wrongly assumed that the absence of novel hardware renders a computer programme inherently unpatentable. The 2017 CRI Guidelines do not make dependency on novel hardware mandatory; what matters is technical advancement and technical contribution beyond a generic computer program.
Allowed and remanded for de novo consideration. A rejection recording only that "the inventive concept lies in algorithm steps, merely receiving encoded data" was held untenable. The court's objection was not to the choice of words but to the imprecise and generic methodology: where claims define a method of decoding encoded video by reference to steps and physical features such as a decoder and buffer, the Controller must identify what precisely is objectionable in that claim language. Patentability under section 3(k) is to be assessed for the presence of technical effect or technical contribution following Ferid Allani.
