Read Time: 13 minutes

Synopsis

The Delhi High Court in its judgment dated May 15, 2023 allowed a petition by software giant Microsoft challenging patent controller’s decision over an invention related to “Methods & Systems for authentication of a user for sub-locations of a network location”. It was rejected by the patent office on the ground that the same was merely an algorithm which was implemented on a computer program per se, barred by Section 3(k) of the Patents Act, 1970.

Justice Sanjeev Narula, while allowing the petition observed,

“Controller’s rejection stems from misinterpretation of Section 3(k) of the Act, and an oversight of technical effect and contribution of the claimed invention, resulting in erroneous determination that the subject patent constitutes “computer program per se”. By focusing solely on the implementation of the invention using computer-executable instructions and algorithms on a general purpose computing device, the Controller has failed to consider the true technical nature and advancements provided by the invention. The claimed invention offers 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. It not only provides for a two-tier authentication process but also improves user experience, which is vital in the field of computer networks.”

The matter was remanded back to the patent office as the invention was rejected only on the basis of Section 3(k), without considering novelty and inventive-step. A period of one month was granted to the respondents, to examine the invention in light of precedents, statutory framework and guidelines for Computer Related Inventions.

Reliance was placed on Justice Ayyangar Report (1957) which sought revisions to Section 3, Rajya Sabha Joint Parliamentary Committee that recommended insertion of word “per se” under Section 3(k), press release dated Dec. 27, 2004 and Mar. 23, 2005, 161st report on Review of Intellectual Property Rights Regime in India suggesting the need to clarify “per se” occurring under Section 3(k), Patents Act, 1970 and Guidelines issued by the Patent Office for examination of Computer Related Inventions.

“The intent of the amendment was to allow grant of patents to CRIs that involve a novel hardware component or provide a technical contribution to the prior art(s) beyond the program itself. In other words, if a computer program is used in conjunction with a hardware or results in a technical effect/ solves a technical problem, it may be eligible for patent protection. This amendment brings Indian patent jurisprudence in line with international practices,” Court added with respect to the insertion of word per se.

The issue before the court primarily focussed on the interpretation of “computer program per se” under Section 3(k) of the Patents Act, 1970.

Brief Background:

The appellant Microsoft Technology filed an application on November 7, 2003, for registration of an invention related to “Methods and Systems for authentication of a user for sub-locations of a network location”. The Patent Office in its first examination report on April 27, 2016 and subsequent hearing, raised following objections namely, (a) Lack of novelty, (b) Lack of inventive step (c) non-patentable invention under Section 3(k) of the Act (d) lack of clarity and conciseness qua scope of claimed invention under section 10(4)(c) of the Act.

Counsel for the appellant argued that the impugned order was liable to be set aside as it had incorrectly interpreted section 3(k) and failed to provide sufficient reasoning for rejection as well. "The intent of the legislature to add words per se does not mean that patents to a computer program are impermissible altogether. The claims submitted before the Patent Office related to a technical process, solving a technical problem and providing a technical solution/advancement related to the security of data accessed on a network, which does not fall exclusively within the ambit of section 3(k), but is a combination of software and hardware components, counsel for the appellant submitted," the counsel argued.

Counsel for the respondent submitted that the Patent Office had rightly rejected the claim of the appellant. The claimed invention is merely an algorithm which, by definition, is a set of rules that have to be followed to solve a problem. The set of instructions are being implemented on a computer program per se, and hence, the subject invention is non-patentable, submitted counsel for the respondent. It was added that since Patent rights are territorial in nature, reliance on statutory provisions and judicial pronouncements from EU and UK were misplaced.

What was the invention about?

Para 40 of the judgment summarizes the invention in question.

The method described in the subject patent, which uses two separate cookies, allows users to authenticate themselves before accessing one or more network sites. One cookie is used for authentication at the network location, and another at the sub-location. The claimed invention’s technical effect or contribution is to use two different cookies to prevent unauthorised access to network sub-locations and successfully thwart attempts by malicious users, to access network sub-locations by stealing cookies from other users – “The technical effect is the improved security of the authentication process for accessing sub-locations of a network location. Prior to this invention, using only one cookie to authenticate a user for both the network location and sub-locations posed a security risk, as malicious users could steal cookies from others and gain unauthorized access. By using two different cookies/ two-tier authentication – one for the network location and another for the sub-location – the subject patent provides a more secure authentication process that is not vulnerable to cookie theft”, Para 40 provides.

Court’s observation with respect to Computer Related Inventions (CRIs):

“The concept of technical effect and contribution is crucial in determining the patent eligibility of CRIs, but there is currently a lack of clarity in this area. It is essential to identify and evaluate technical contributions in CRIs to determine their eligibility for patent protection. The rapidly evolving nature of technology means that what constitutes a technical effect or contribution may become outdated in future. Therefore, there is a pressing need to clarify these concepts in order to strike a balance between protecting the rights of inventors and promoting the public interest and social welfare. Flexible and adaptive approach would ensure patent protection to genuine technological innovations while also preventing grant to overly broad patents that hinder innovation and competition. Thus, establishing clear and consistent criteria and guidelines for determining patentability of computer programs is essential to avoid ambiguity and arbitrariness in the patent system”, Para 36 of the judgment provides.

Case Title: Microsoft Technology Licensing, LLC v. Assistant Controller of Patents and Designs