The Indian Patents Act, 1970 plays a crucial role in defining what constitutes patentable subject matter. One of the most debated provisions is Section 3(k), which excludes the patenting of algorithms, business methods, and computer programs per se. In 2024, the Delhi High Court heard two key cases involving Blackberry Limited, which revolved around patent applications for software-driven inventions. These cases—C.A. (COMM-IPD-PAT) 229/2022 and C.A. (COMM-IPD-PAT) 318/2022—offer valuable insights into when an algorithm transcends being a mere set of instructions and can be eligible for patent protection.
C.A. (COMM.IPD-PAT) 229/2022 |
C.A. (COMM.IPD-PAT) 318/2022 |
|
Court |
Delhi High Court | |
Judge |
Pratibha M. Singh | |
Date of Judgement |
August 30, 2024 | |
Application No. and Title of Invention |
1762/DEL/2008 – Administration of Wireless Systems | 717/DEL/2009 –Auto-Selection of Media Files |
Summary of Claim 1 |
System managing conflicts between wireless servers, determining configuration data, and resolving conflicts for smooth operation. | Method for managing media files in a device by assigning a confidence level and automatically selecting files to fill available storage. |
Reason for Refusal by Patent Office |
Algorithm-based, non-inventive hardware, fell under Section 3(k). | Algorithm-based, considered a sequence of instructions for managing media without providing a technical effect, and thus excluded under Section 3(k). |
Issue |
Whether the invention qualifies for patent protection or is excluded under Section 3(k) as an algorithmic process. | |
Section 3(k) of Indian Patents Act, 1970 (as amended) |
Algorithms, business methods, mathematical methods, and computer programs per se [are not patentable] | |
Appellant’s Submissions |
The invention solved a technical problem by resolving conflicts between wireless servers and had a technical effect. | The invention dynamically selects media files based on available storage and preferences, providing technical advancements. |
Respondent (PTO)’s Submission |
The invention is algorithmic, lacked inventive hardware, and fell under the Section 3(k) exclusion. | The invention is algorithmic, involving non-technical features like file selection based on user preferences, and thus excluded under Section 3(k). |
Court’s Analysis |
The invention is based on conditional logic without inventive hardware, making it algorithmic. The invention is purely related to the algorithm, without any substantial change in hardware, making it non-patentable under Section 3(k). | The invention results in a significant enhancement of the capability of the device and makes it ‘functionally’ more efficient without any changes to storage space (dynamic media synchronization, cache management etc.). This, satisfies the test of technical effect and technical contribution. |
Held |
The invention is algorithmic, lacks inventive hardware, and falls under Section 3(k). The appeal is dismissed. | Appeal allowed partially. Blackberry is directed to amend claims focusing on automatic selection and cache management to allow patent grant. |
| Ratio | If algorithm instructions are implemented through computer software and result in a technical effect or contribution then the test applicable to computer software can also be applied and patentability can be adjudged. | An invention involving algorithms must demonstrate technical effects, such as improved functionality of devices, to be patentable and avoid exclusion under Section 3(k). |
The two Blackberry judgments, although both involving algorithm-related patents, demonstrate different outcomes based on the specific technical contributions of each invention.
In the first judgment, C.A. (COMM-IPD-PAT) 229/2022, the court adopted a stringent approach by refusing patent protection on the grounds that the invention was essentially an algorithm without any inventive hardware or demonstrable technical effect. The court focused heavily on the exclusion under Section 3(k) and the Computer Related Inventions (CRI) Guidelines, 2017, and, concluded that the invention did not extend beyond a mere set of instructions. This led to the rejection of the application, consistent with the precedent set by Lava v. Ericsson (CS(COMM) 65/2016), which emphasized that an invention must enhance hardware functionality to be patentable. This strict interpretation could be seen as somewhat restrictive, as it did not thoroughly explore whether the invention might offer a technical contribution in terms of improving system functionality.
In contrast, the second judgment, C.A. (COMM-IPD-PAT) 318/2022, showcased a more nuanced approach. The court acknowledged that features like dynamic media synchronization and cache management enhanced the device's functionality and efficiency. Recognizing these technical contributions, the court allowed the appeal partially, directing amendments to the claims to focus on these aspects. This decision aligns with the evolving understanding that software-related inventions can be patentable if they provide a tangible technical effect or improvement, even if they involve algorithms.
A key point of consideration is the application of the technical effect test, which has been time and again reaffirmed in judicial precedents like Ferid Allani (W.P.(C) 7/2014 & CM APPL. 40736/2019), Microsoft (C.A.(COMM.IPD-PAT) 29/2022) and more. The courts have emphasized that an invention can overcome the exclusion under Section 3(k) if it demonstrates a technical advancement or contributes to a technical field. However, the exact parameters of what constitutes a sufficient technical effect remain somewhat ambiguous, leading to varying interpretations and outcomes.
The two Blackberry cases provide a valuable lens through which to view the evolving approach of Indian courts toward algorithm-based patents under Section 3(k) of the Indian Patents Act. While the exclusion of algorithms and computer programs per se remains a significant barrier, these cases demonstrate that algorithm inventions can still qualify for patent protection if they contribute to a technical field or improve hardware functionality.
