Ferid Allani v. Union of India & Ors.

Relevant Acts and provisions

Patents Act, 1970

Section 2(1)(j)Section 3(k)

Provisions considered: Sections 2(1)(j) and 3(k) of the Patents Act, 1970, on the computer programme exclusion.

Brief facts

Ferid Allani filed a national-phase patent application for a method and device for accessing information sources and services on the web, which the Patent Office rejected, holding that the method claims were merely a computer programme excluded under Section 3(k) and that the device claims lacked novelty. The Intellectual Property Appellate Board dismissed the appeal, reasoning that the application did not disclose any technical effect or technical advancement. The applicant challenged that order in a writ petition before the Delhi High Court.

Issues before the Court

1. Does Section 3(k) of the Patents Act, 1970 exclude all inventions implemented through a computer programme, or only computer programmes per se?
2. Did the applicant's invention disclose a technical effect or technical contribution sufficient to take it outside the exclusion?

Court's findings

The Court held that Section 3(k) bars the patenting of computer programmes per se and not every invention that is based on or implemented through a computer programme, noting that the words per se were deliberately added during the legislative process so that genuine inventions developed using computer programmes would not be refused a patent. The Court observed that in the modern digital world, since virtually every device incorporates a computer programme, an overly literal reading of Section 3(k) would make numerous genuine technological inventions non-patentable.

The Court held that the settled practice is to test computer-related inventions on the touchstone of technical effect and technical contribution, and that if an invention demonstrates such technical effect it remains patentable even though it is based on a computer programme.

The Court noted that the application had been examined without the benefit of the later Guidelines for Examination of Computer Related Inventions, and that it deserved reconsideration in light of the correct legal position.

Decision

Writ petition allowed; the patent application remanded to the Patent Office for re-examination in light of the correct interpretation of Section 3(k).

Keywords

Computer Related Inventions Patentable Subject Matter Section 3(k) Software Patent Technical Effect