Ab Initio Technology LLC v Assistant Controller of Patents (2024)

Summary

“These appeals challenge rejection of patent application Nos.6500/DELNP/2011 and No.6501/DELNP/2011” ... “on the ground that subject matter is not patentable under Section 3(k) of the Patents Act, 1970” ... “since claims relate to computer program per se or algorithm. Patent application No.6500/DELNP/2011 was also rejected on the ground of not being a valid divisional application under Section 16 (1) of the Act.” (para 1) “Both subject patent applications are divisional applications of Indian Patent Application No. 1167/DELNP/2006 which proceeded to grant of patent vide Indian Patent No.268384” (para 3). The appellant submitted that the method “enabled associated hardware of a computer, engaged in data profiling, to increase the speed of functional dependency analysis and hence, net effect in saving computer resources.” (para 11) The respondent’s counsel “essentially stated that this was a data processing method and would achieve data profiling at best.” (para 14)

The Court held that “‘Technical effect’ is the bridge or the connect between an input and the processor. If an ingenious input system/method is able to allow the processor to give a more efficient and faster output and computation, the effect, in this Court’s opinion, would be ’technical’.” (para 38) It found “an apparent technical effect of the invention claimed and, therefore, the objection of non-patentability taken under Section 3(k) of the Act cannot sustain.” (para 47) “The objection under Section 16(1), therefore, does not sustain.” (para 52) “Present appeals stand allowed to the limited extent that the objections on the aspects of Section 3(k) and Section 16(1) of the Act are not tenable; impugned orders are set aside to that extent.” (para 56) “However, on the aspect of Section 2(1)(ja) of the Act, matter is remanded to the Office of Controller General of Patents & Designs for fresh consideration with respect to the same.” (para 57)

What the court decided

1. Substance and the test. “As stated in the 2017 CRI Guidelines, it is not the form but the underlying substance which has to be considered for the purposes of analyzing Section 3(k) of the Act.” “The test which must be applied for determining whether the claim is of a computer program per se / algorithm or otherwise is based on determination of whether the said program/algorithm has a technical effect.” “Some examples of technical effect were given in the 2013 CRI Guidelines (supra) which included higher speed, reduced hard-disks access time, more economical use of memory, more efficient database search strategy, more effective data compression techniques, improved user interface etc. Even though, these examples were not included in the 2016 CRI Guidelines, they gave a useful indication of what, practically, would come within the radar for determining ’technical effect’.” (para 35)
2. Reading the exclusion. “Axiomatically, any method or process through an algorithm/computer software is meant to solve a problem.” “However, the trend of the Courts, as evident from the decisions cited above in paragraph 31 is to give a restrictive interpretation to the exclusion in Section 3(k) of the Act, and adopt a more benevolent interpretation to what would amount to ’technical effect’. This approach aligns itself with the fast progress of technology, which always evolves incrementally by solving technical/processual problems in order to achieve greater efficiency and better user interface.” (para 36)
3. Hardware, code and per se. “Any processing input is given through a code/program which the hardware processes, providing an output.” “However, this is not how the Courts have interpreted the inclusion of ‘per se’ in this provision.” (para 37)
4. Technical effect as the bridge. “‘Technical effect’ is the bridge or the connect between an input and the processor. If an ingenious input system/method is able to allow the processor to give a more efficient and faster output and computation, the effect, in this Court’s opinion, would be ’technical’. A ’technical effect’ cannot be just about nuts and bolts, or hardware tweaks and transformations.” “In other words, a well-designed innovative input in the form of a process, system, or method which enhances the computational ability of the processor would undoubtedly result in a ’technical effect’ and which goes beyond the usual ‘user interface’.” (para 38)
5. The claimed features. “The appellant, therefore, rightly claims that the invention has necessary structural features which include a processor, a data source, an input device, an output device and processing modules, as well as an interface. The method, therefore, in conjunction with a special purpose computer, allows for a technical effect of faster computation, parallel processing, efficient storage, and ability to assess functional dependency analysis.” (para 44)
6. Section 3(k) applied. “The technical effect, therefore, is claimed at the system level between different processors and modules to increase the speed of functional dependency and workload distribution by parallel processing. This, the appellant has rightly claimed, is beyond the ’normal interactions between the program and the hardware (client/server computer)’ – the reason provided in the impugned order. This is different from cognitive data profiling which is only meant to organize aspects of data for a human interface without any impact in computation or processing. Therefore, in the opinion of this Court, there is an apparent technical effect of the invention claimed and, therefore, the objection of non-patentability taken under Section 3(k) of the Act cannot sustain.” (para 47)
7. The divisional application. “It was observed in the IPRP” (“International Preliminary Report on Patentability”) “that Claims 1 – 30, 31 – 61, and 62 – 82 of the parent application constitute distinct inventions as they relate to different inventive concepts. It was buttressed by appellant’s counsel that the subject application was filed as a divisional application which has Claims of 62 – 82 of the parent application.” (para 48) The Court referred to “Syngenta Ltd. v. Controller of Patents and Designs, 2023:DHC:7473-DB”, in which the Division Bench held that “a Divisional Application moved in terms of Section 16 of the Act would be maintainable provided the plurality of inventions is disclosed in the provisional or complete specification that may have been filed.” (para 49) “The objection under Section 16(1), therefore, does not sustain. In any event, it is noted that the objection was taken in respect of only one of the subject applications, and not both subject applications.” (paras 48, 49, 52)
8. Procedure. The residual objection on inventive step. “The impugned order is silent on submissions regarding inventive step. This may have been since the applications were being rejected on maintainability under Section 3(k) of the Act, on which the impugned orders are focused. Considering the issue of maintainability is decided in favour of appellant, it would necessitate that objection on lack of inventive step based on prior art(s), would need to be assessed.” (para 55)
9. Procedure. Disposition. “Present appeals stand allowed to the limited extent that the objections on the aspects of Section 3(k) and Section 16(1) of the Act are not tenable; impugned orders are set aside to that extent.” (para 56) “However, on the aspect of Section 2(1)(ja) of the Act, matter is remanded to the Office of Controller General of Patents & Designs for fresh consideration with respect to the same. It is directed that a de novo hearing notice may be issued, to this limited extent, and the applications be examined afresh, within a period of three months of the receipt of this order.” (paras 56–57)

What the court did not decide

“It is made clear that this Court has not examined the matter on the aspect of lack of inventive step/ Section 2(1) (ja)/prior art(s), and it is up to the Controller to assess the same.” (para 57)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 16 October 2026.