Ferid Allani vs. Union of India Impact on Technology Innovators with a background and strategies to overcome section 3(k) of Indian patent Act

Ferid Allani vs. Union of India 

Impact on Technology Innovators with a background and strategies to overcome section 3(k) of Indian patent Act

Meaning by, of, for, or in itself in Latin, per se is a common phrase used to emphasize the importance or connection of something. It is used ambiguously in section 3 of the Indian Patent Act. In the Indian Patents system, Section 3 is very important and features regularly in the news as it is very complex in nature. Several judgements were given by the court, IPAB, and Controller General of the Patent office that have simplified section 3 to a great extent. Section 3(d) and section 3 (k) concern IP industries and Section 3(k) have been further clarified in favour of the IT industry in the recent Ferid Allani Vs. UOI case in the honourable Delhi High Court.

Section 3 (k):

“A mathematical or business method or a computer programme per se or algorithms”

We will examine the complexity of this section along with how its role has been further enhanced by the said case. There is no patent on software programs in India; they grant copyright to assert your right on the program you have created. Section 3(k) of the patent act describes that there is no patent on an invention of any mathematical or business method or a computer programme or algorithms. There is no protection provided by the patent laws to computer software. Computer programs received recognition as ‘literary work’ in 1984 and they made the definition more specific and precise in the Copyright Amendment Act of 1994. India is one of the first countries in the world to provide statutory protection to computer software that is one of the toughest in the world.

In Accenture Global Service case, following the observation of IPAB, Indian Patent Office passed an order on May 10, 2013 to grant the application for the company’s invention with below observation: ‘the claim is not software per se but, a system that claims to improve web services and software. The invention does not fall in the category of section 3(K), so patent is granted’.

This paved the way for grant of patents to software programs which result in a technical improvement. Although computer programs are not patentable “per se”, a tangible product can be patented that requires an algorithm or a computer program. This requires a strategy on the part of the innovator.

Strategies to overcome section 3(k)

·         Show some tangible, hardware or physical entities/elements.

·         Show a few technical advancements that the innovation offers in solving a problem.

·         Show a practical application of the innovation.

The verdict in case of Ferid Allani (applicant) vs Union of India, by honourable Delhi High Court on the patentable subject, related to computer-related invention clarifies ambit and complexity of section 3(k). Ferid Allani who is a foreign national had filed an Indian patent application which the controller rejected under section 3(k). The applicant filed a writ petition in Delhi High Court in which he stated that his invention does not come under the ambit of the section cited as it involves technical effect and hardware elements.

As per Computer-Related Inventions (CRIs) guidelines 2013, we describe the technical effect as a solution to a technical problem which the invention as a whole tends to overcome.

He submitted that combination of the hardware and the executable instructions drastically reduces the time required for searching. On Nov 18th 2008, the Patent Office again rejected the claims under section 3(k). Thereafter, the applicant filed an appeal against the impugned order of the controller in IPAB. However, the IPAB also rejected the appeal and stated that the patent application discloses no technical effect or technical advancement.

The applicant had applied in the Delhi High Court to challenge the decision of IPAB and/or controller. Here, the court relied on the CRI guidelines as suggested by the Patent Office, and the amendment history of section 3(k). In particular, the word “per se” was emphasized.  The committee suggests that the legal position of the computer-based invention in India is like that of Europe where `technical effect‟ and “technical contribution” determine the patentability of any invention. Most other patent laws follow the same pattern.

After hearing both the parties, the court observed: “In today’s digital world, when most inventions are based on computer programs, it would be retrograde to argue that all such inventions would not be patentable.”

The patent applications must be examined to check if at all they provide any ‘technical contribution’. The court explained further regarding the usage of “per se” in Sec 3(k): “The words ‘per se’ were incorporated so as to ensure that genuine inventions which are developed, based on computer programs are not refused patents.”

The court has observed that the patent application deserves to be considered for re-examination (and also consider section 3(k) relevant precedent cases) and directed that the Patent Office would re-examine and a decision on the patent shall be taken within two months.

In this landmark decision by the Delhi High Court, a single-judge bench of Justice Pratibha M. Singh has restated that not all computer programs can be barred under Sec 3(k) of the Patents Act. If the software programs show a ‘technical effect’ or a ‘technical contribution’, then such programs ought to be protected. Patent applications for programs in Artificial Intelligence, Blockchain, Additive Manufacturing, Internet Of Things, Medical Robotics, and Autonomous Vehicles are on the rise in India and this historical judgment will improve things further for the Technology innovators.

References-

https://www.casemine.com/judgement/in/56ea8461607dba371ebca364

https://patentsrewind.wordpress.com/

https://www.khuranaandkhurana.com/2017/02/13/section-3-k-of-indian-patent-act-case-studies/

https://www.inklyo.com/latin-phrases-you-use-every-day/

https://www.worldtrademarkreview.com/indias-cri-patent-examination-guidelines-three-revisions-three-visions

https://www.intepat.com/blog/patent/software-programs-patentable/