BlackBerry Limited v Controller of Patents and Designs (2026)

Summary

“This is an Appeal filed under Section 117A of the Patents Act, 1970” ... “seeking quashing and setting aside of orders dated 11.10.2019” ... “and 05.03.2020” ... “passed by the Assistant Controller of Patents and Designs” ... “under Section 15 of the Act” ... “refusing the Patent Application No. 1976/DEL/2008 filed on 20.08.2008 titled as ‘COLOUR DIFFERENTIATING A PORTION OF A TEXT MESSAGE SHOWN IN A LISTING ON A HANDHELD COMMUNICATION DEVICE’” (para 1). “The substantial objection raised in the FER” (“First Examination Report”) “relates to the claims lacking novelty under Section 2(1)(j) of the Act in view of the document EP1767008 (A1)” ... “The claims were also objected under Section 3(k) of the Act for falling within the scope of computer program.” (para 3) “On 11.11.2019, the Appellant filed a review application” ... “under Sections 77(1)(f) and 15 of the Act” (para 5), and “The review application was dismissed vide the Impugned Order II.” (para 6) “The Impugned Order II notes that the colour coding in Subject Application is done through an algorithm and the algorithm uses message address characteristic.” (para 15)

The Court held that “In the light of the disclosures in D1 and D2 along with the teaching of D3” ... “the present invention lacks inventive step.” (para 31) It held that “Section 3(k) of the Act requires that any computer-implemented invention must demonstrate a clear ’technical effect’ or ’technical contribution’ which is beyond the abstract logic of a program.” (para 38) “Since the algorithm in the present invention claimed under the Subject Application is only related to colour coding on the basis of message characteristic and not enhancing the systems functionality, it does not possess a ’technical effect’ or ’technical contribution’.” (para 45) “An error in sending a message to a recipient cannot be considered a technical problem as it depends on the person sending the message.” (para 46) “Therefore, the present invention under the Subject Application is not patentable under Section 3(k) of the Act.” (para 48) “In view of the above analysis, the present Appeal is dismissed and the Impugned Orders are upheld. There shall be no order as to costs.” (para 49)

What the court decided

1. D1 and the subject algorithm. “In the Subject Application, the colour coding is being done through an algorithm, wherein the algorithm uses message address characteristic such as a host name, domain name etc. in order to differentiate between recipients. In D1, the algorithm uses message characteristic attributes such as identifier, flag, origination source, and a keyword etc.” (para 28) “In other words, the use of message characteristics in algorithms in order to create the categorizing features is similar in D1 and the present invention under the Subject Application.” (paras 28–29)
2. D2 and D3. “D2, like the Subject Application, the invention pertains to avoiding the wrong recipients. D3, under a specific embodiment, includes a display for showing contents of the individual messages in various visually distinguishable formats corresponding to different individual users.” (para 30)
3. Inventive step. “In the light of the disclosures in D1 and D2 along with the teaching of D3, which discloses the individual messages content in various visually distinguishable formats corresponding to different individual users, the present invention lacks inventive step. The disclosures in D1 to D3 renders the present invention obvious.” (para 31) “Therefore, the present invention under the Subject Application lacks inventive step.” (paras 31–32)
4. The requirement of section 3(k). “Section 3(k) of the Act requires that any computer-implemented invention must demonstrate a clear ’technical effect’ or ’technical contribution’ which is beyond the abstract logic of a program. Such ’technical effect’ or ’technical contribution’ is absent in the subject matter of the present invention.” (para 38)
5. The Microsoft test. “In Microsoft Technology Licensing LLC, One Microsoft Way v. Assistant Controller of Patents, Patent Office, 2024 SCC OnLine Mad 2785, it is held that even when the invention in question relates to a CRI” (“Computer Related Invention”) “, if it results in a technical effect which improves the functioning of the system and efficacy (effect on hardware), or provides a technical solution to a technical problem discussed in the complete specification, the impact of the claimed invention is not limited to a particular application / data set, and therefore, it overcomes the exclusion.” (para 39)
6. Technical effect and reliability. “The present invention relates to CRI, but does not result in a ’technical effect’ that improves the systems functionality and efficacy at the hardware level. The ’technical effect’ that can be possibly considered is the improved reliability. However, reliability increase should be intrinsic to the computer that is an improvement in the machine itself, which is not the case here. Accordingly, in the present invention, there is no such ’technical effect’ enhancing the system’s functionality.” (para 45)
7. A technical problem. “The feature of the present invention of differentiating between recipients and notifying the sender of the message before the message is sent is not of technical nature, thereby fails to provide a technical solution. An error in sending a message to a recipient cannot be considered a technical problem as it depends on the person sending the message. The problem that the present invention under the Subject Application solves is in itself not a technical problem.” (para 46) “The Impugned Order II rightly states that a technical problem is universal in nature and technicality is not varied person to person and an error in sending a message with respect to the recipient cannot be considered a technical problem as it depends on the person sending the message.” (paras 46–47)
8. Disposition. “Therefore, the present invention under the Subject Application is not patentable under Section 3(k) of the Act. Accordingly, there is no infirmity with the Impugned Orders and no interference is warranted in the present Appeal.” (para 48) “In view of the above analysis, the present Appeal is dismissed and the Impugned Orders are upheld. There shall be no order as to costs.” (paras 48–49)

Subsequent treatment

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