Microsoft Technology Licensing, LLC v. The Assistant Controller of Patents and Designs

Relevant Acts and provisions

Patents Act, 1970

Section 15Section 3(k)

Provisions considered: Section 3(k) of the Patents Act, 1970, concerning the computer programme per se exclusion.

Brief facts

Microsoft Technology Licensing filed an Indian patent application for a two-cookie authentication method that secures access to sub-locations of a network location. The Assistant Controller rejected the application under Section 15, holding the claims to be a mere algorithm implemented as a computer programme per se and therefore non-patentable under Section 3(k). Microsoft appealed under Section 117A, arguing that the Controller had misread the per se qualifier and ignored the security-related technical effect of the invention.

Issues before the Court

1. Does the claimed dual-cookie authentication invention fall within the computer programme per se exclusion under Section 3(k)?
2. What test should examiners apply to determine technical effect and technical contribution in computer-related inventions?

Court's findings

The Court held that the phrase computer programme per se in Section 3(k) was inserted to ensure that genuine inventions based on computer programmes are not refused patents merely because they are implemented in software, and that the Controller's approach of treating any algorithm run on a general-purpose computer as automatically excluded ignored the historical purpose of the qualifier.

The Court found that the two-tier cookie mechanism prevented malicious users from exploiting stolen authentication cookies to access sub-locations within a network, and that this improvement in the security of the authentication process constituted a technical effect going beyond the ordinary interaction of software with hardware; a requirement of novel hardware has no independent basis in Section 3(k).

The Court also observed, without deciding the point conclusively, that the absence of illustrative examples in the 2017 Guidelines on Computer Related Inventions has produced inconsistent examination outcomes, and suggested that clearer guidance be formulated for examiners assessing technical effect.

Decision

Appeal allowed; the Controller's refusal order was set aside and the application remanded for examination of novelty, inventive step and other requirements.

Cases cited

• Ferid Allani v. Union of India & Ors., 2019 SCC OnLine Del 11867

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

Keywords

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