Raytheon Company v. Controller General 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, and the novel hardware requirement for computer-related inventions.

Brief facts

Raytheon's national phase application for scheduling in a high-performance computing system was refused under Section 15 for lack of inventive step and non-patentability under Section 3(k). The Assistant Controller applied the discontinued 2016 Guidelines on Computer Related Inventions, which required novel hardware in conjunction with software, instead of the 2017 Guidelines then in force.

Issues before the Court

1. Which set of Guidelines on Computer Related Inventions governs examination of the application?
2. Is a novel hardware component a mandatory requirement for patentability of a computer-related invention under Section 3(k)?

Court's findings

The Court held that the 2016 Guidelines, which required novel hardware in conjunction with software, had been superseded by the 2017 Guidelines, which focus on substance over form and abandoned the novel-hardware criterion; the Controller therefore erred in applying the outdated test.

The Court, relying on its earlier rulings in Ferid Allani and Microsoft Technology Licensing, held that the requirement of novel hardware is a standard with no basis in Section 3(k), and that the proper enquiry is whether the invention involves a technical advancement providing a technical solution to a technical problem.

The Court found that Raytheon's scheduling method reduced the time and computational resources required for job execution in high-performance computing systems, and directed that the application be re-examined without insisting on novel hardware, within a fixed timeline given the delay already occasioned.

Decision

Appeal allowed; the refusal order was set aside and the application remanded for fresh examination under the 2017 Guidelines.

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