Ab Initio Technology LLC v Controller of Patents (2025)

Summary

“The appellant assails an order dated July 13, 2020, which rejected its patent application No. 4693/CHENP/2010 dated July 27, 2010 in respect of its claimed invention titled ‘Graphic Representations of Data Relationship’.” (para 1) Counsel for the appellant stated “that the claimed invention was developed in the aftermath of the 2008 financial crisis to address the problem of optimally tracing back or forward the flawed data item and identifying all computations that were affected by the flawed data during data processing, which traditionally involves a tedious step-by-step manual process.” (para 6) “Against this backdrop, the respondent issued the impugned order dated July 13, 2020 rejecting the application by retaining objections in respect of lack of novelty and inventive step under Section 2(1)(j), and non-patentability under Section 3(k) of the Patents Act.” (para 4) The impugned order had held that “there is no specific hardware available in the claimed invention” and that the subject matter “relates to ‘computer algorithm’ and falls within scope of section 3(k)” (para 20).

The Court held that “under Indian law, patent applications in relation to a CRI” (“computer-related invention”) “, even de hors novel hardware or impact on the internal working thereof, would not be excluded under Section 3(k) if such CRI makes a technical contribution or has a technical effect.” (para 47) It found “that the claimed invention is not excluded from patentability under Section 3(k) of the Patents Act” (para 54), that “the claimed invention satisfies the requirements of novelty” (para 59), and that “PSITA” (“person skilled in the art”) “armed with D1 and even common general knowledge would not be able to arrive at the claimed invention absent ingenuity.” (para 61) “Consequently, (T)CMA(PT) No.58 of 2023 is allowed without any order as to costs by directing that Patent Application no.4693/CHENP/2010 shall proceed to grant on the basis of the last submitted claims.” (para 62)

What the court decided

1. Technical advance and section 3(k). “The use of the phrase ’technical advance over existing knowledge’ in Section 2(1)(ja) underscores the necessity to test the existence of technical advance with reference to the knowledge existing on the priority date.” “As a result of the use of the disjunctive ‘or’ before ‘having economic significance’, it is evident that ’technical advance over existing knowledge’ is not an essential pre-requisite and that economic significance may be established instead; subject, however, to the overarching requirement of the feature of the invention not being obvious to a PSITA” (“person skilled in the art”). “By contrast, for purposes of establishing that the claimed invention is not excluded from grant by Section 3(k), including for purposes of verifying if there is a technical contribution, it is not necessary to draw a comparison with existing knowledge although such comparison becomes necessary thereafter to satisfy the requirements of Section 2(1)(j).” (para 44)
2. The meaning of technical. “Whether qualified by contribution, character, nature or effect, the word ’technical’ is always used in the sense of practical methods and skills used in the physical and natural sciences.” “While technical contribution focuses on whether one or more features of the claimed invention adds technically to the field, technical effect is focused on the technical impact or outcome, if any, thereof. Technical character and nature focus on the intrinsic qualities of the feature. Obviously, much of the time, there would be considerable, if not complete, overlap and the use of any one of these words instead of another would have no material impact.” (para 46)
3. No requirement of novel hardware. “The conclusion that follows is that, under Indian law, patent applications in relation to a CRI” (“computer-related invention”) “, even de hors novel hardware or impact on the internal working thereof, would not be excluded under Section 3(k) if such CRI makes a technical contribution or has a technical effect.” “Such theoretical distinction is, however, not the sole plank because any CRI that makes a technical contribution or has a technical effect has such effect on the computer or the device in which the software is embedded, thereby justifying the conclusion that it is more than a computer programme.” (para 47)
4. The Indian position. “Indian law, thus, does not adopt either the extreme position that every computer-related or computer-implemented invention makes a technical contribution or the exacting standard adopted by the UK courts requiring a direct and transformative impact on the internal working of the computer or outside the computer system. In Microsoft MHC, I had conflated one of the AT&T signposts, as correctly critiqued in Ramanujan’s Patent Law. On revisiting the subject, I find that the Indian approach is substantially in line with the EPO Board’s jurisprudence but not with that of courts in the UK.” (para 47) “Given the consistent approach of courts in India and the incorporation of these principles in the CRI Guidelines 2025, departure therefrom is not warranted in the interest of administrative ease. I recognise that this entails a tricky case-by-case analysis of whether there is a technical as opposed to non-technical contribution. Even so, it is a price worth paying to strike an appropriate balance.” (paras 47–48)
5. The technical considerations. “Although the claimed invention sets out to address the need to track data lineage, both upstream and downstream, including data transformation and evolution, by finding the relationship amongst data items, a use-case which may be characterized as cognitive, i.e. conveying information to the user, the above narration illustrates that the claimed invention involves technical considerations of reduction of query response time by eliminating the resort to a tedious and time-consuming step-by-step manual process and allowing the user to pose multiple ad-hoc queries related to data lineage or type of data relationship simulataneously, and enabling retrieval of such information in a user-configurable manner” ... “These technical considerations relating to the internal functioning of the system are effected by technical features viz., diagram generator, data management system, configuration file storage.” (para 52)
6. Section 3(k) applied. “The conclusion that follows from this discussion is that the claimed invention uses algorithms and computer programmes, but such use results in the technical contribution and effect of reducing query response time, allowing users to pose multiple ad-hoc queries at a time to generate data lineage diagrams” ... “In light of this, I find that the claimed invention is not excluded from patentability under Section 3(k) of the Patents Act.” (para 54)
7. Novelty over D1. “The independent claims of D1 reveal that this prior art is focussed on entities.” (para 57) “By contrast, the claimed invention, as discussed earlier, is focussed on data lineage. For instance, if one wants to track and retrieve the first data item (i.e. the source data) relating to a data set or the last data item or any data item on the chain or sequence of data items, the claimed invention can retrieve and provide such data, whereas D1 is not designed or programmed to provide this information. Therefore, all features of the claimed invention are not present in D1. Hence, the claimed invention satisfies the requirements of novelty.” (paras 57, 59)
8. D1 as analogous prior art. “This is also referred to as the originating data source and bears some resemblance to the tracing of upstream data in the claimed invention. To that extent, D1 is reasonably pertinent and qualifies as analogous prior art.” (para 60)
9. Inventive step. “Having said that, D1 is not designed or programmed to trace and retrieve every upstream or downstream data item in the data set and, for instance, identify the modified data item or the problematic data item in the data set.” “Indeed, in view of the problem that D1 set out to resolve vis-a-vis the problem that the claimed invention sets out to resolve, notwithstanding that both deal with data management, in my view, PSITA” (“person skilled in the art”) “armed with D1 and even common general knowledge would not be able to arrive at the claimed invention absent ingenuity. Therefore, I conclude that the claimed invention satisfies the novelty and inventive step requirements under Section 2(1)(j). As a corollary, the impugned order cannot be sustained and is hereby set aside.” (para 61)
10. Procedure. Disposition. “Consequently, (T)CMA(PT) No.58 of 2023 is allowed without any order as to costs by directing that Patent Application no.4693/CHENP/2010 shall proceed to grant on the basis of the last submitted claims.” (para 62)

Subsequent treatment

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