Title Session 6: Mr. AR.pdf ✅

Delhi High Court, Ferid Allani at prs 14, 16 Delhi High Court, Ericsson at pr. 120 Technical Board of Appeals, Controlling pension benefits system (2000) Technical Board of Appeals, Auction Method (2004) Technical Board of Appeals, Clipboard formats (2006) Technical Board of Appeals, Computer Program Product (1998) Technical Board of Appeals, Computer Program Product (1998) Technical Board of Appeals, Computer Program Product (1998) Technical Board of Appeals, Auction Method (2004) Technical Board of Appeals, Duns Licensing (2006) Enlarged Board of Appeals, Programs for computers (2010) Delhi High Court, Microsoft I Delhi High Court, Lava Delhi High Court, Microsoft III Madras High Court, Microsoft IV Delhi High Court, Raytheon Not an invention and not patentable (4) Bibliography Section 3(k): computer programs per se inserted in 2002 interesting legislative history The Patents (Second Amendment) Bill, 1999 carried it, but without the term "per se" Is India TRIPs compliant? Similar to our discussion on Section 3(d): Constructive ambiguity on "invention" in Article 27.1 of TRIPS Agreement Most other jurisdictions have a similar exclusion, directly or indirectly The evolution under the EPC Some Indian decisions 14. Across the world, patent offices have tested patent applications in this field of innovation, on the fulcrum of ‘technical effect’ and ‘technical contribution’. If the invention demonstrates a ‘technical effect’ or a ‘technical contribution’ it is patentable even though it may be based on a computer program. 16. Insofar as Computer Related Inventions are concerned, there are three sets of guidelines that have been published by the Patent Office.The initial Guidelines are termed as ‘Draft Guidelines’, the second document is described as ‘Guidelines’ and the one issued in 2017 is termed ‘RevisedGuidelines’.While the initial 2013 Draft Guidelines defines “technical effect”, the said definition is not to be found in the later guidelines. The meaning of ‘technical effect’ is no longer in dispute owing to the development of judicial precedents and patent office practices internationally and in India.There can be no doubt as to the fact that the patent application deserves to be considered in the context of settled judicial precedents which have now laid down the interpretation of Section 3(k), the Guidelines and other material including the legislative material. a mathematical or business method or a computer programme per se or algorithms JPC recommended inserting the term "per se" “In the new proposed clause (k) the words ''per se" have been inserted.This change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon.The intention here is not to reject them for grant of patent if they are inventions. However, the computer programmes as such are not intended to be granted patent.This amendment has been proposed to clarify the purpose.” but why? Patents (Amendment) Act. 2002 passed as perJPC recommendation the term "per se" applies only for computer programme? "technical contribution" test In sum, currently under EPC, for computer program implemented inventions "any hardware" test Article 52(2) of the EPC (2000) E.g. EU has a similar exclusion in statute Back to India But Patents (Amendment) Act, 2005 retained the 2002 version But, for reasons unknown, the Statement of Objects and Reasons of the 2005 Amendment Act stated this: "(iii) to modify and clarify the provisions relating to patenting of software related inventions when they have technical application to industry or in combination with hardware;" suggests a disjunctive test E.g.US has similar exclusion but by judicial interpretation 120.Thus, it is appears to me prima facie that any invention which has a technical contribution or has a technical effect and is not merely a computer program per se as alleged by the defendant and the same is patentable.The objection raised by the defendant in the suit for infringement is not tenable, however, admittedly defendant's revocation petitions are pending, the same have to be considered on merit including the objection of Section 3(k) and (m). At this interim stage, this court is not impress with the argument of the defendant that the injunction be refused on this ground. "technical contribution" or "technical effect" terms borrowed from EU/UK jurisprudence without complete understanding Not accounting for 2005 Statement of Objects and Reasons (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.” "technical contribution" test abandoned for subject matter eligiblity "any hardware" test "technical effects" test? independently applied for inventive step/novelty of computer program implemented inventions AND "technical effects" test for subject matter matter eligilbity for novelty/inventive step (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 Obviously inspired from Article 52(2) of the EPC (2000) subject-matter or activities as such.” In the opinion of the Board, while it follows that the EPC does not prohibit the patenting of inventions consisting of a mix of excluded and non-excluded features [citation omitted], it does not necessarily follow that all such mixes are patentable. Since patentability is excluded only to the extent to which the patent application relates to excluded subject-matter or activities as such, it appears to be the intention of the EPC to permit patenting only in those cases in which the invention involves a contribution to the art in a field not excluded from patentability. so, compare with prior art and examine if the difference lies in computer program "There is no basis in the EPC for distinguishing between "new features" of an invention and features of that invention which are known from the prior art when examining whether the invention concerned may be considered to be an invention within the meaning of Article 52(1) EPC. Thus there is no basis in the EPC for applying this so-called contribution approach for this purpose." 3.5Therefore, taking into account both that a mix of technical and non-technical features may be regarded as an invention within the meaning of Article 52(1) EPC and that prior art should not be considered when deciding whether claimed subject-matter is such an invention, a compelling reason for not refusing under Article 52(2) EPC subject-matter consisting of technical and non-technical features is simply that the technical features may in themselves turn out to fulfil all requirements of Article 52(1) EPC. 3.6 Moreover, it is often difficult to separate a claim into technical and non-technical features, and an invention may have technical aspects which are hidden in a largely non- technical context (cf point 5.8 below). Such technical aspects may be easier to identify within the framework of the examination as to inventive step, which, in accordance with the jurisprudence of the boards of appeal, is concerned with the technical aspects of an invention (cf point 5.3 below).Thus, in addition to the restrictive wording of Article 52(3) EPC limiting the applicability of Article 52(2) EPC, there may be practical reasons for generally regarding mixes of technical and non-technical features as inventions in the meaning of Article 52(1) EPC. 3.7 For these reasons the Board holds that, contrary to the examining division's assessment, the apparatus of claim 3 is an invention within the meaning of Article 52(1) EPC since it comprises clearly technical features such as a "server computer", "client computers" and a "network". 5.1... A computer system including a memory (clipboard) is a technical means, and consequently the claimed method has technical character in accordance with established case law. ...Thus, the Board holds that the claim category of a computer-implemented method is distinguished from that of a computer program. Even though a method, in particular a method of operating a computer, may be put into practice with the help of a computer program, a claim relating to such a method does not claim a computer program in the category of a computer program. Hence, present claim 1 cannot relate to a computer program as such. 5.3 Claim 5 is directed to a computer-readable medium having computer-executable instructions (i.e. a computer program) on it to cause the computer system to perform the claimed method.The subject- matter of claim 5 has technical character since it relates to a computer-readable medium, i.e. a technical product involving a carrier... ... where a piece of software manages, by means of a computer, an industrial process or the working of a piece of machinery where a program for a computer is the only means, or one of the necessary means, of obtaining a technical effect ... where, for instance, a technical effect of that kind is achieved by the internal functioning of a computer itself under the influence of said program. = "technical effects" = "further technical effects" "Determining the technical contribution an invention achieves with respect to the prior art is therefore more appropriate for the purpose of examining novelty and inventive step than for deciding on possible exclusion under Article 52(2) and (3)." 14... as novelty and inventive step can only be established on the basis of the technical features of the invention. 15. From this distinction between the technical features and non- technical features ...it must be inferred that non-technical features, to the extent that they do not interact with technical features to produce a technical effect, cannot establish novelty or inventive step 5.3... the invention will be assessed with respect to the requirement of inventive step by taking account of only those features which contribute to a technical character... Enlarged Board of Appeals confirmed this to be the evolution of jurisprudence and not a matter of judicial inconsistency why? (ratio legis) Caution when applying UK and US caselaw UK US applies the Alice test Section 3(k): Business Methods and other items Patents (Amendment) Ordinance 2004 "a computer programme per se other than its technical application to industry or a combination with hardware" 5. Secondly, the Controller has misapplied the decision of this Court in Telefonaktiebolaget LM Ericsson (PUBL) v. IntexTechnologies (India) Limited. Despite acknowledging the significance of technical effect and contribution as guiding principles in the evaluation of Computer-Related Inventions (CRIs), the Respondent fails to consider the Court's observations that even a computer program may qualify for patent protection if it showcases a technical contribution to the field or delivers a discernible technical effect. 7. For the foregoing reasons, the present appeal deserves to be allowed.The ImpugnedOrder is quashed.The Controller shall re-consider the application and analyse the technical contribution and technical effect of the invention claimed in the subject application. This decision shall be rendered keeping in mind the observations made herein above, the views expressed by this Court in Ferid Allani v. Union of India3, CRI 2017 Guidelines, Manual of Patent Office Practice and Procedure (2019), as also other judgments on this issue rendered by this Court. "70. It is clear that an invention should not be deemed a 'computer programme per se' merely because it incorporates algorithms and computer- executable instructions. In fact, the patentability should be assessed based on its practical application in solving technical problems and the technical advancements it offers. Furthermore, if the subject matter is implemented on a general-purpose computer, but results in a further technical effect that improves the computer system's functionality and effectiveness, the claimed invention cannot be rejected as non-patentable for being a 'computer programme per se'.This aligns with the intent behind the qualifier 'per se', introduced by the legislature in the Patent (Amendment) Act of 2002 for computer programmes..." 36. Accordingly, it is evident that the subject patent application exhibits tangible benefits beyond ordinary computing functionality and is not barred by Section 3(k) of the Act. Further, considering the requirement of novelty and inventive step have already been satisfied, the subject patent application satisfies all the requirements for patentability.Therefore, the patent is liable to be granted. 36.Thus, even when the claimed invention relates to a CRI, if it results in a technical effect that improves the system's functioning and efficacy(effect on hardware), or provides a technical solution to a technical problem and is, therefore, not limited in its impact to a particular application or data set, it would surmount the exclusion under section 3(k) of the Patents Act. 21. As can be seen from the above extracts in case of computer related inventions, the patent office needs to examine if there is a technical contribution or as to what is the technical effect generated by the invention as claimed. In the present case, it needs to be examined as to whether the system sought to be patented reduces the time period in scheduling job execution in HPC system. The requirement of novel hardware is a higher standard which lacks any basis in law.