Evolution of Patentability of computer program-based innovations in India- through the Ferid Allani case
After more than 19 and a half years of litigation over a patent for a computer programme based invention, finally the very recent order by the Intellectual Property Appellate Board, in the case of Ferid Allani states that computer inventions that meet the criteria of a ‘technical effect’ are patentable under the law. Artificial Intelligence (hereinafter referred to as “AI”) and related technologies are all pervasive and are permeating into every sector of business. With increasing digitisation of businesses in India comes a demand of software products. The development of software requires a large amount of resources, financial, technical and human; and unfortunately software itself can be pirated within seconds. Therefore there is a dire need to protect software in India. In compliance with the TRIPS Agreement, it is evident that in India, while computer programs are already protected under the Copyright Act, 1957, another significant method available for protection available for the same is that of patent. As far as protection of AI innovation is concerned, the Indian Patent Act currently provides protection only to the true and first inventor, which implies a legal person, which includes either a natural person or an artificial person, i.e. a corporation. Section 3(k) of Patent Act 1970 clearly states that “mathematical or business method or computer programme per se or algorithms are excluded from patentability. The scope of this paper explains how the turn of the events in the recent order by a quasi-judicial body, in the case of Ferid Allani states that computer inventions that meet the criteria of a ‘technical effect’ , are patentable under the law. This order opens the doors for an enormous corpus of innovation to now become protectable and more valuable as patent protection for innovations in India is essential to foster innovation.
EXPANDING THE SCOPE OF SECTION 3(K) OF THE PATENT ACT, 1970
The scope of Section 3(k) of the Patent Act was recently litigated in the case of Ferid Allani vs Union of India, wherein the ambit and intricacy of Section 3(k) of the Patent Act was debated upon. The Patent Applicant (hereinafter referred to as “Applicant”) sought grant of a patent for a "method and device for accessing information sources and services on the web". The Patent Office raised objections as to lack of novelty and patentability under Section 2(1)(j) and Section 3(k) of the Act.
It was stated by the patent applicant that his invention does not come within the scope of Section 3(k) as the invention involves a technical effect. In order to substantiate his claim, the applicant relied on the Computer Related Inventions (CRIs) guidelines 2013, Wherein “technical effect” has been defined as under:
Technical Effect: It is defined for the purpose of these guidelines as solution to a technical problem, which the invention taken as a whole, tends to overcome. A few general examples of technical effect are as follows: Higher speed, reduced hard-disk access time, more economical use of memory, more efficient data base search strategy, more effective data compression techniques, improved use interface, better control of robotic arm and improved reception/transmission of a radio signal.
In consonance with the above definition, the applicant further argued that the claimed invention provides more efficient and simpler use of accessing information on the Internet (as compared to the already acknowledged methods) i.e. “technical effect” and therefore should be patentable. It was also contended that in today’s digital world, it is very rare to find a technology that isn’t based on a computer program, particularly innovations in the sphere of artificial intelligence, blockchain and other digital products, Therefore, it would be regressive in nature to not allow such inventions to be patentable.
These claims were initially rejected by the Patent Office and the Intellectual Property Appellate Board (hereinafter referred to as “IPAB”). However, on an appeal to the Delhi High Court (hereinafter referred to as “DHC”), by the applicant, the DHC directed the Patent Office to re-examine the application. In doing so, the DHC laid emphasis on the CRI guidelines as suggested by Patent Office, and focussed on the history of the amendment leading to Section 3(k) in its present form. The DHC laid emphasis on a Report of the Joint Committee on the Patents (Second Amendment) Bill, 1991, recording reasons for inclusion of the words “per se” to Section 3(k). This change had been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon, which may amount to a “technical contribution”. An invention which demonstrates a “technical contribution” may be patentable even if it is based on a computer program. The legislative intent behind the inclusion of the words “per se” was not to reject computer programmes from patentability if they are inventions. The DHC noted that the use of `per se’ in Section 3(k) suggests that the legal position in India is similar to the EU which also has a similar exclusionary provision being Article 52 of the European Patent Convention, which reads as under:
“(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information.
(3) Paragraph 2 shall exclude the patentability of the subject matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.”
The DHC noted that across the world, patent offices have tested patent applications in fields of innovation on the fulcrum of “technical effect” and “technical contribution”. An invention which demonstrates a ”technical effect‟ or “technical contribution‟ it is patentable even though it may be based on a computer program.
Considering the aforementioned factors and the revised CRI Rules, the DHC had directed the Patent Office to re-examine the patent application. This was once again rejected by the Patent Office. However, on appeal, the Intellectual Property Appellate Board (“IPAB) based on the recommendations made by the Delhi High Court upheld the patent application on the ground that the invention falls under the following indicators of technical effect i.e., higher speed, more economical use of memory and a more efficient database search strategy.
The order by the IPAB can prove to be very beneficial for patentability of AI technologies based on computer programmes in India. Various Indian startups are using AI and machine learning to provide a wide spectrum of solutions across different sectors of the industry. Such innovations deserve to be protected in order to prevent competitors from copying the innovations. Therefore, innovative technologies which result in higher speed, reduced hard-disk access time, more economical use of memory, more efficient database search strategy, more effective data compression techniques, improved use interface, better control of robotic arm, improved reception/transmission of a radio signal etc, amounting to ‘technical effect’, may be considered to be patentable, as per the order directed in the case of Ferid Allani.
- The Potential for Artificial Intelligence for Healthcare, Available at https://www.ncbi.nlm.nih.gov/pmc/articles/PMC6616181/, Last accessed on 16.03.2021
- Grooming the Law with Technology: Legal Protection of Software in India, Available at https://corporate.cyrilamarchandblogs.com/2020/02/legal-protection-of-software-in-india/, Last accessed on 16.03.2021
- Software- instructions that tell a computer what to do. Software comprises the entire set of programs, procedures, and routines associated with the operation of a computer system. The term was coined to differentiate these instructions from hardware—i.e., the physical components of a computer system. A set of instructions that directs a computer’s hardware to perform a task is called a program, or software program.Available at https://www.britannica.com/technology/software, Last accessed on 16.03.2021
- The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most comprehensive multilateral agreement on intellectual property. The TRIPS Agreement is a minimum standards agreement, which allows Members to provide more extensive protection of intellectual property if they so wish. Members are left free to determine the appropriate method of implementing the provisions of the Agreement within their own legal system and practice. Available at https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm, Last accessed on 16.03.2021
- Section 6 of the Patent Act, 1970- (1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say,—(a) by any person claiming to be the true and first investor of the invention;(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.
- Section 1(42) of the General Clauses Act, 1897- “Person” shall include any company or association or body of individuals, whether incorporated or not
- The word “person” in section 4 of the Indian Partnership Act which has replaced section 239 of the Indian Contract Act contemplates only natural or artificial, DulichandLaxminarayan v. Commissioner of Income Tax, Nagpur, AIR 1956SC 354
- Section 3(k), The Patent Act,1970
- Ferid Allani vs Union of India & Ors (W.P. ( C ) 7/2014)
- "invention" means a new product or process involving an inventive step and capable of industrial application;] 13 [ 14 [(ja) "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art;]]
- The CRI guidelines (draft) 2013 were published by the Indian Patent Office. These guidelines incorporate various provisions of patentablity of computer related inventions. The guidelines emphasize on technical advance and novel hardware for grant of patent to computer related inventions. Available at http://nopr.niscair.res.in/bitstream/123456789/31954/1/JIPR%2020(4)%20210-222.pdf; However, these guidelines do not constitute rule making. In case of any conflict between these guidelines and the provisions of the Patents Act, 1970 or the Rules made there under, the said provisions of the Act and Rules will prevail over these guidelines. The guidelines are subject to revision from time to time based on interpretations by Courts of law, statutory amendments and valuable inputs from the stakeholders; Available at http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_86_1_Revised__Guidelines_for_Examination_of_Computer-related_Inventions_CRI__.pdf, Last accessed on 16.03.2021
- Supra note 12
- Supra note 12
- Supra note 12
- Joint Committee Report , Available at http://www.ipindia.nic.in/writereaddata/Portal/Images/Patents-Act-REPORT-OF-THE-JOINT-COMMITTEE-19-Dec-2001.pdf, Last accessed on 10.09.2020
- Supra note 12
- Supra note 12
- Allani Ferid vs Assistant Controller of Patents & Designs, OA/17/2020/PT/DEL