Delhi High Court: In a case wherein the patent application filed by Microsoft for registration of an invention relating to “Methods and Systems for Authentication of a User for Sub-Locations of a Network Location” was rejected on the ground that it was non-patentable, a Single Judge Bench of Sanjeev Narula, J.* opined that the Controller had failed to consider the true technical nature and advancements provided by the invention and had solely focused on the implementation of the invention using computer-executable instructions and algorithms on a general-purpose computing device.
Background
The petitioner, Microsoft Technology Licensing, LLC (‘Microsoft’) filed an Indian Patent Application for registration of an invention relating to “Methods and Systems for Authentication of a User for Sub-Locations of a Network Location” (‘subject patent/claimed invention’). The Controller rejected Microsoft’s application under Section 15 of the Patents Act, 1970 (‘Act’), finding the claimed invention to be non-patentable under Section 3(k) of the Act and having other unmet requirements under the Act.
Analysis, Law, and Decision
The Court noted that Section 3 of the Act outlined the categories of subject matter that were not considered inventions under the Patent law and under this provision, Section 3(k) included the phrase “computer programme per se”. The Court opined that the term “per se” was added to make it clear that “computer programmes as such” were non-patentable but the intent of the Patents (Amendment) Act, 2005 was to allow grant of patent to Computer Related Inventions (‘CRIs’) that involved a novel hardware component or provided a technical contribution to the prior art(s) beyond the programme itself. Thus, if a computer programme was used in conjunction with hardware or resulted in a technical effect/ solved a technical problem, it might be eligible for patent protection.
The Court opined that the controller had entirely missed the point and his approach was misguided as mere conclusion that claims were implemented on computer and were computer-executable instructions/algorithms performed on a general-purpose computing device was not the correct approach for rejecting a patent application. The Court further opined that the fact that the claimed invention involved a set of algorithms executed in a pre-defined sequential manner on a conventional computing device did not necessarily imply that it lacked a technical effect or contribution. It was possible that the invention provided a technical solution to a technical problem, and the computer programme use was merely a means to achieve the technical solution. The Court further opined that “if the subject matter was implemented on a general-purpose computer, but resulted in a technical effect that improved the computer system’s functionality and effectiveness, the claimed invention could not be rejected on non-patentability as ‘computer programme per se’”.
The Court opined that the Controller had erred in summarily rejecting the application by stating that it entailed a set of algorithms to execute instructions in a pre-defined sequential manner and the interpretation of “per se” under Section 3(k) of the Act was entirely overlooked by the Controller. The Court further opined that the subject patent enhanced the security of accessing sub-locations of network locations and streamlined the user experience as the technique of using two different cookies for providing authenticated access to a client computer accessing a sub-location(s) within a network location, which simplified user interaction with content received from feeds.
The Court observed that the use of two different cookies for providing authenticated access to a client computer accessing sub-location(s) in a network location ensured that even if both cookies were stolen by a malicious user, the malicious user could not gain unhindered access to other sub-locations within the network location and thus, the Court opined that “this technical solution went beyond the user-interface level and provided a technical effect and contribution, and therefore, it was patentable”. The Court further opined that “the fact that the invention improved the user experience did not necessarily mean that it was limited to the user-interface and therefore, it would be incorrect to exclude the claimed invention on the basis that it was limited to user-interface as the solution provided by the subject patent enabled more secure and efficient and streamlined access to network locations and sub-locations, demonstrating the impact of the underlying technical advancements”.
The Court opined that the Controller’s rejection stemmed from misinterpretation of Section 3(k) of the Act, and an oversight of technical effect and contribution of the claimed invention, resulted in erroneous determination that the subject patent constituted “computer programme per se”. The Court further opined that “the Controller had failed to consider the true technical nature and advancements provided by the invention and had solely focused on the implementation of the invention using computer-executable instructions and algorithms on a general-purpose computing device”. The Court observed that the claimed invention offered a novel and inventive technical solution to a security problem related to the authentication of users for accessing sub-location(s) within a network location and it not only provided for a two-tier authentication process but also improved user experience, which was essential in the field of computer networks.
The Court, thus, set aside the impugned order of the Controller and remanded the matter back to the Controller for further action and directed that Microsoft’s patent application should be re-examined on the objections regarding lack of novelty, and inventive step in view of other cited prior arts.
The Court opined that “it was essential for the Indian Patent Office to adopt a more comprehensive approach when assessing CRIs, considering technical effects and contributions provided by the invention rather than solely focusing on the implementation of algorithms and computer-executable instructions. An invention should not be deemed a computer programme per se merely because it involves algorithms and computer-executable instructions; rather, it should be assessed based on the technical advancements it offers and its practical application in solving real-world problems. A more thorough and accurate assessment of the invention’s eligibility for patent protection should be conducted to ensure that deserving inventions were granted the protection they merit under the Act”.
[Microsoft Technology Licensing, LLC v. The Assistant Controller of Patents and Designs, 2023 SCC OnLine Del 2772, decided on 15-5-2023]
Advocates who appeared in this case :
For the Appellant: Vindhya S. Mani, Gursimran Singh Narula, Vaishali Joshi, Advocates;
For the Respondent: Harish Vaidyanathan Shankar, Central Government Standing Counsel; Srish Kumar Mishra, Sagar Mehlawat, Alexander Mathai Paikaday, Advocates; Santosh Kumar Gupta, Shraddha Turkar, Controllers at the Indian Patent Office; Rajiv Choudhary, Advocate Amicus Curiae.
*Judgment authored by: Justice Sanjeev Narula