Kroll Information Assurance, LLC v. The Controller General of Patents, Designs and Trademarks & Ors.

Relevant Acts and provisions

Patents Act, 1970

Section 117ASection 2(1)(ja)Section 3(k)Section 59

Provisions considered: Sections 2(1)(j), 2(1)(ja), 3(k) and 59 of the Patents Act, 1970.

Brief facts

Kroll Information Assurance appealed under Section 117A against an order of the Assistant Controller refusing its national-phase patent application for a system and method to locate persons sharing sensitive information on a peer-to-peer network. The Controller had rejected proposed claim amendments as exceeding the original disclosure under Section 59, and had separately held the invention non-inventive and an excluded algorithm or computer programme per se under Section 3(k).

Issues before the Court

1. Did the proposed claim amendments exceed the scope of the original disclosure under Section 59?
2. Does the claimed peer-to-peer search-and-profiling system amount to an excluded algorithm or computer programme per se under Section 3(k)?

Court's findings

The Court held that the proposed amendments to the principal claim were permissible under Section 59, since the added limitations narrowed rather than broadened the original claim and merely explained features already disclosed in the complete specification, and it set aside the Controller's rejection of the amendments on that ground.

On Section 3(k), the Court applied the technical-effect test developed in its earlier decisions, holding that a computer-related invention escapes the exclusion only where it produces a technical effect or advancement in the functioning of the hardware, and not where it merely automates a conventional function using generic computing components.

The Court found that the claimed invention used standard hardware to issue keyword-based searches on a peer-to-peer network and profile responding users, without any demonstrated enhancement to the hardware's functioning, and accordingly held that the claims fell within the exclusion, notwithstanding that the amendments themselves were valid.

Decision

Appeal disposed of; refusal of the patent application upheld under Section 3(k), though the amendment objection under Section 59 was set aside.

Cases cited

• Microsoft Technology Licensing, LLC v. The Assistant Controller of Patents and Designs, 2023:DHC:3342

Authorities referred to in the decision. Please verify each citation in the judgment itself.

Keywords

Claim Amendment Computer Related Inventions Section 3(k) Software Patent Technical Effect