BlackBerry Limited v Assistant Controller of Patents and Designs (2024)

Summary

“The present appeal under Section 117A of the Patents Act, 1970” ... “was originally filed by the Appellant- BlackBerry Limited before the Intellectual Property Appellate Board” ... “in the year 2020” and on “the enactment of the Tribunals Reforms Act, 2021, the present appeal stood transferred to this Court.” (para 2) “The present appeal relates to the subject patent application titled ‘Administration of Wireless Systems’. The subject patent application bearing Application Number 1762/DEL/2008 was filed on 25th July, 2008” (para 4). After a hearing, “the ld. Controller refused the application for the grant of the patent under Section 15 of the Act on the grounds that the objection relating to non-patentability under Section 3(k) of the Act still persisted” and the order was passed “on the grounds that the subject application was directed towards sets of instructions and software which were purely functional and lacking any inventive hardware features.” (para 9) The Controller “has admitted that the subject patent application has been refused only on account of objection on non-patentable subject matter under Section 3(k) of the Act and no other objections are pending.” (para 19)

The Court held that “the technical contribution of the subject patent primarily consists of a sequence of instructions” (para 40) and that “the words ‘per se’ do not qualify algorithms like they qualify computer programmes.” (para 43) “Such resolution of conflicts in respect of the flow of data through a set of instructions would be nothing but algorithms.” (para 51) “While the latter part of the impugned order which requires inventive hardware features would not be in accordance with law, the present invention does not cross the threshold of 3(k) as it relates purely to algorithm.” (para 54) “Given the above considerations, the appeal lacks merit is, therefore, dismissed.” (para 61)

What the court decided

1. Procedure. Claim construction in refusal appeals. “While the judgment in Guala Closures” ... “primarily considered the issue of infringement, the said principle is also equally applicable when deciding appeals against the refusal of patent applications. In the context of the present appeal, where the Court must assess the nature, scope, and substance of the invention, Claim Construction becomes essential for determining the eligibility of the subject matter for which protection is sought.” (para 22)
2. The inventive hardware standard. “From the above impugned refusal order, it is noticed that the ld. Controller has once again applied the standard of requirement of inventive hardware to assess patentability of the subject patent application. In several decisions, including Ferid Allani Vs Union of India & Ors., 2019 SCC OnLine Del, and Raytheon Company v. Controller General of Patents and Designs, 2023:DHC:6673, this Court has clarified that Computer Related Inventions” ... “cannot be tested on the fulcrum of requirement of inventive hardware, as the same is a higher standard which lacks any basis in law.” (para 29) “As can be seen the above extract, the novel or inventive hardware requirement existed in the 2016 CRI” (“Computer Related Inventions”) “Guidelines issued by the Office of the Controller General of Patents, which were subsequently replaced by the 2017 CRI Guidelines, which have no such requirement.” (paras 29–30)
3. Obiter. No mechanical objection. “In several cases before this Court and in the present appeal also, the contention that the subject patent is nothing more than an algorithm or sequence of instructions, is taken. This Court emphasizes that such a ground for challenging or refusing a patent application cannot be taken mechanically, without proper justification.” (para 21)
4. A sequence of instructions. “the Claims read with the Complete Specification clearly highlight that the core functionality of the subject patent are driven by conditional logic and procedural steps. For instance, the programs on the mobile devices evaluate policies and resolve conflicts through predefined conditions and actions, which are classic characteristics of if-then-else logical iterations.” (para 32) “Therefore, upon the analysis of the Independent Claims 1 and 3, it is evident that the technical contribution of the subject patent primarily consists of a sequence of instructions.” (para 40) “Accordingly, in terms of the judgment of the Coordinate Bench of this Court in Lava International v. TLM Ericsson, 2023:DHC:2698, given that the technical contribution of the subject matter for which patent protection is sought is solely covering a complex sequence of instructions, the objection under Section 3(k) of the Act raised by the Controller is justified.” (paras 32, 40–41)
5. Algorithms and ‘per se’. “A perusal of Section 3 (k) of the Act would show that the words ‘per se’ do not qualify algorithms like they qualify computer programmes.” (para 43) “While the term ‘per se’ qualifies computer programme, algorithms are not entitled to patents under the extant law. To this extent, insofar as algorithms or sequences of instructions are concerned, the law in India is different from the law in other jurisdictions, such as, US and EU.” (paras 43–44)
6. The business-method analogy. “In the EU, for example, under Article 52, algorithms are also qualified by the words ‘as such’. While the effect of ‘per se’ or ‘as such’ on computer programmes would make the law uniform between India and EU qua such programs, insofar as algorithms are concerned, the position would not be the same. This Court has considered the position in respect of business methods in India in reference to Section 3(k) of the Act in OpenTV Inc. v. The Controller of Patents and Designs, 2023:DHC:3305 and held that the bar in India over business methods is absolute and not qualified. The similar position would also be applicable for algorithms, as no qualifier exists in respect of algorithms also.” (para 45)
7. Algorithms within a system. Of “Lava International Ltd. (supra)” the Court held that “the Court has clarified that inventions which merely integrate such elements within a system or method that enhances the functionality of a system or hardware component, and meet all the criteria for patentability, can indeed be considered patentable. This understanding emphasises the necessity of demonstrating a further technical effect through the incorporation of algorithms within a system to qualify for patent protection.” (para 46)
8. Instructions that determine data flow. “Insofar as the patentability of inventions incorporating algorithms is concerned, if the invention relates purely to a set of instruction or policies which determine the flow without any substantial change in the hardware, such instructions even if they have a bearing on the manner in which the flow of data occurs would not be entitled to patent protection in India. But if the algorithm instructions are thereafter implemented through computer software coded for this purpose and result in a technical effect or technical contribution then the test applicable to computer software can also be applied and patentability can be adjudged. In such a case the inventive feature would have to be the implementation and not the algorithm itself.” (paras 48, 52)
9. Claim 1 a pure algorithm. “A perusal of Claim 1 of the final claims shows that the initial paragraphs mention various systems and hardware. However, the key part of the Claim 1 is the configuration and the evaluation of the policies associated with the said configuration date to identify logically unresolvable conflicts.” ... “Such resolution of conflicts in respect of the flow of data through a set of instructions would be nothing but algorithms. The only technical effect of such instructions would be that the data would be regulated in a manner so as to determine the transmission either in favour of secondary servers or primary servers. Such an algorithm, in the opinion of this Court, is a pure algorithm which is not patentable under Indian Law, i.e. The Patents Act, 1970.” (para 51)
10. Vicom. Of “the decision of the Board of Appeal if the European Patent Office in Vicom Inc.” the Court held that “the Board of Appeal, has considered the qualifier of ‘as such’ to mathematical methods, which is not applicable in India.” (para 55) “Thus, the primary nature of the invention differs significantly, focusing more on network management, which in any event cannot be granted patent protection.” (para 56) The differences “lead to the conclusion that the Vicom Inc. (supra) judgment is not be applicable to the present case.” (paras 55–57)
11. Disposition. “while the subject patent application has a technical contribution, the said contribution primarily arises out of the use of an algorithmic process that regulates the flow of information through a sequence of instructions.” (para 58) “Consequently, the objection raised by the Controller under Section 3(k) of the Act is both appropriate and justified.” (para 59) “Given the above considerations, the appeal lacks merit is, therefore, dismissed.” (paras 58–61)

Subsequent treatment

• Followed — In Kroll Information Assurance v Controller General of Patents (2025) the Delhi High Court reproduced para 48 of this judgment (para 26) and held that “the reasoning adopted in Blackberry (supra) for upholding non-patentability under Section 3(k) of the Act would squarely be applicable in the present case” (para 33).