Ferid Allani v Union of India (2019)

Summary

Writ petition filed challenging the order of the Intellectual Property Appellate Board (IPAB). “The present writ petition challenges the order of the IPAB dated 25th March, 2013, by which the IPAB has dismissed the appeal filed by the Petitioner challenging the order of the Patent Office dated 18th November 2008, in effect, confirming the rejection of the patent application filed by the Petitioner.” (para 1) “The Petitioner, who is a citizen of Tunisia, filed a patent application No. IN/PCT/2002/00705/DEL seeking grant of patent for a ‘method and device for accessing information sources and services on the web’.” (para 2) The Patent Office “came to the conclusion that claims 1 to 8 were hit by Section 3(k) of the Patent Act, and claims 9 to 14 lacked novelty” (para 4), and “The reasoning given by the IPAB was that the patent application did not disclose any technical effect or technical advancement.” (para 5) The Petitioner’s case was “that the specification clearly discloses a technical effect and a technical advancement, especially as of the priority date. It is not a mere software which is simply loaded on to a computer.” (para 6) The respondents submitted “that the present case does not call for any interference under Article 227 inasmuch as the IPAB, which is a technical Tribunal has taken a view in the matter and in writ jurisdiction, the Court is not to re-appreciate the technical arguments raised before the Tribunal.” (para 8)

The Court held that “The bar on patenting is in respect of ‘computer programs per se” “’ and not all inventions based on computer programs.” (para 10) and that “If the invention demonstrates a ’technical effect’ or a ’technical contribution’ it is patentable even though it may be based on a computer program.” (para 11) It directed “that the Petitioner’s patent application is re-examined in the light of the above observations and in accordance with the judicial precedents, settled practices of patent offices in examining such patent applications, including the Guidelines which have been issued for Computer Related Inventions.” (para 14) “The petition is allowed in the above terms. All pending applications are disposed of.” (para 15)

What the court decided

1. The bar on computer programs. “Moreover, Section 3(k) has a long legislative history and various judicial decisions have also interpreted this provision. The bar on patenting is in respect of ‘computer programs per se” “’ and not all inventions based on computer programs.” (para 10)
2. Inventions based on computer programs. “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. Innovation in the field of artificial intelligence, blockchain technologies and other digital products would be based on computer programs, however the same would not become non-patentable inventions – simply for that reason.” (para 10)
3. Obiter. Programs built into products. “It is rare to see a product which is not based on a computer program. Whether they are cars and other automobiles, microwave ovens, washing machines, refrigerators, they all have some sort of computer programs in-built in them.” (para 10)
4. The effect programs produce. “Thus, the effect that such programs produce including in digital and electronic products is crucial in determining the test of patentability.” “Patent applications in these fields would have to be examined to see if they result in a ’technical contribution’.” (para 10)
5. The words per se. “The addition of the terms ‘per se’ in Section 3(k) was a conscious step and the Report of the Joint Committee on the Patents (Second Amendment) Bill” “specifically records the reasons for the addition of this term in the final statute as under:” “In the new proposed clause (k) the words ‘per se’ have been inserted. This change has been proposed because sometime the computer programme may include certain other things, ancillary thereto or developed thereon. The intention here is not to reject them for grant of patent if they are inventions. However, the computer programmes ‘as such’ are not intended to be granted patent. The amendment has been proposed to clarify the purpose.” (para 10)
6. Genuine inventions not refused. “A perusal of the above extract from the Report shows that Section 3 (k) which was sought to be inserted by the Patents (Second Amendment) Bill, 1999 originally read as ‘a mathematical or business method or a computer program or algorithms.’” “The words ‘per se’ were incorporated so as to ensure that genuine inventions which are developed, based on computer programs are not refused patents.” (para 10)
7. Parallel with the European Patent Convention. “The use of ‘per se’ read along with above extract from the report suggests that the legal position in India is similar to the EU which also has a similar provision, Article 52 of the European Patent Convention” which reads in part: “Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.” (para 11)
8. Technical effect and technical contribution. “Across the world, patent offices have tested patent applications in this field of innovation, on the fulcrum of ’technical effect’ and ’technical contribution’. If the invention demonstrates a ’technical effect’ or a ’technical contribution’ it is patentable even though it may be based on a computer program.” (para 11)
9. The 2013 Draft Guidelines’ definitions. The Petitioner relied on “the Draft Guidelines for Examination of Computer Related Inventions, 2013 which define ’technical effect’ and ’technical advancement’”: technical effect “is defined for the purpose of these guidelines as solution to a technical problem, which the invention taken as a whole, tends to overcome”, with examples including “Higher speed”, “Reduced hard-disk access time”, “More economical use of memory” and “More efficient data base search strategy”; technical advancement “is defined for the purpose of these guidelines as contribution to the state of art in any field of technology”, and “Technical advancement comes with technical effect, but all technical effects may or may not result in technical advancement.” (para 6)
10. Function of the examination guidelines. “After hearing ld. counsels for the Parties, there is no doubt that this patent application was filed in the Patent Office prior to the issuance of the guidelines for Computer Related Inventions. Over the years, the Patent Office has introduced various guidelines in respect of various technological subject matter, in order to guide the examiners as to the settled case law by way of judicial precedents and the legal position internationally. These guidelines do explain the principles that have to be applied by the examiner, and are expected to assist the examiner in dealing with applications, especially, those which involve complex subject matter.” (para 12)
11. Meaning of technical effect. “While the initial 2013 Draft Guidelines defines ’technical effect’, the said definition is not to be found in the later guidelines. The meaning of ’technical effect’ is no longer in dispute owing to the development of judicial precedents and patent office practices internationally and in India.” (para 13)
12. Context for examining the application. “There can be no doubt as to the fact that the patent application deserves to be considered in the context of settled judicial precedents which have now laid down the interpretation of Section 3(k), the Guidelines and other material including the legislative material.” (para 13)
13. Procedure. Re-examination directed. “Accordingly, considering the fact that the term of the patent would be ending very soon - in one year, it is deemed appropriate to direct that the Petitioner’s patent application is re-examined in the light of the above observations and in accordance with the judicial precedents, settled practices of patent offices in examining such patent applications, including the Guidelines which have been issued for Computer Related Inventions. It is directed that the patent would be re-examined and a decision on the patent shall be taken within a period of two months from today, after granting a hearing to the patent applicant.” (para 14)
14. Procedure. Disposition. “The petition is allowed in the above terms. All pending applications are disposed of.” (para 15)

Subsequent treatment

• Followed — In Microsoft Technology Licensing v Assistant Controller of Patents and Designs (2023) the Delhi High Court, on 10 May 2023, quashed the impugned order and directed that the Controller’s decision “shall be rendered keeping in mind the observations made herein above, the views expressed by this Court in Ferid Allani v. Union of India” (para 7)
• Distinguished — In Gunjan Sinha @ Kanishk Sinha v Union of India (2025) the Calcutta High Court Division Bench recorded that “the writ petition was filed challenging the order of refusal to grant patent as per the application of the applicant” and held that “The aforementioned judgements are not applicable in the instant case in view of the different facts and circumstances.” (paras 18–19)