Kroll Information Assurance LLC v Controller General of Patents, Designs and Trademarks (2025)

Summary

“The present appeal has been filed under Section 117A of the Patents Act, 1970” ... “and is directed against the order dated 25th June, 2019” ... “passed by the Assistant Controller of Patents and Designs” ... “whereby the Indian Patent Application No. 8100/DELNP/2007 titled ‘A System, Method and Apparatus to locate at least one type of person, via a Peer to Peer Network’” ... “has been refused.” (para 1) Of the invention, the Court found that “the invention pertains to a system and method for identifying specific types of people or specific types of information on a peer-to-peer network. It operates by using specific search terms to query the network, with the objective of profiling users or locating particular types of data based on the search results.” (para 18) The Controller refused the application on grounds that included “The proposed amendments claimed are beyond the scope of the invention under Section 59 of the Act” and “The subject invention relates to ‘algorithm’ and ‘computer program per se’ under Section 3(k) of the Act.” (para 3)

“I will first consider the permissibility of the proposed amendments under Section 59 of the Act.” (para 8) The Court held that “These additional features narrow down the scope of the Claims” and that “the proposed amendments in Claim 1 are fully within the scope of Section 59 of the Act.” (para 14) On section 3(k), it held that “the invention claimed in the subject patent application is merely enabling a search within a peer-to-peer network” (para 30) and that “the features claimed in Claims 1 to 7 fall under the category of ‘computer programme per se’, and Claims 8 to 10 fall under the category of ‘algorithms’.” (para 31) “Accordingly, for the reasons discussed above, there is no error in the finding of the Controller that the subject patent application cannot be granted in terms of Section 3(k) of the Act.” (para 35) “Accordingly, the present appeal is disposed of” (para 36).

What the court decided

1. The conditions of section 59. “The scope and ambit of Section 59 of the Act has been interpreted by a coordinate bench of this court in Nippon A & L Inc. v. Controller of Patents” (para 12), whose paras 40 and 41 the Court reproduced. “The aforesaid extract stipulates that only the amendments which are in the nature of either disclaimer, correction or explanation are permissible under Section 59 of the Act. Further, while amending the Claims, the scope of the original Claims should not be broadened and the proposed amendments should be in line with the original Complete Specification.” (paras 12–13)
2. Limitations and explanation. “In the present case, a reading of the proposed amendments in Claim 1 would show that the additional features proposed to be added by the appellant, via sub-paragraphs (iii) and (iv), are in fact limitations, specifying the retrieved information as mentioned in sub-paragraph (i). These additional features narrow down the scope of the Claims. Further, the additional features are in the nature of explanation, which explains how the locating of a specific file and person is done, and do not include anything which was not disclosed in the Complete Specification. In my view, the proposed amendments in Claim 1 are fully within the scope of Section 59 of the Act. Accordingly, the findings of the Controller, insofar as they relate to rejection of the proposed amendments, are erroneous and are set aside.” (para 14)
3. The claimed invention. “A reading of the aforesaid extract would show that the invention pertains to a system and method for identifying specific types of people or specific types of information on a peer-to-peer network. It operates by using specific search terms to query the network, with the objective of profiling users or locating particular types of data based on the search results. The system also uses standard computing components such as a processor, memory, storage and conventional software to execute keyword-based searches across the peer-to-peer network.” (para 18)
4. Algorithms and computer programmes per se. The Court reproduced the Guidelines: “4.5.3 Claims directed as ‘Algorithm’: Algorithms in all forms including but not limited to, a set of rules or procedures or any sequence of steps or any method expressed by way of a finite list of defined instructions, whether for solving a problem or otherwise, and whether employing a logical, arithmetical or computational method, recursive or otherwise, are excluded from patentability.” “4.5.4 Claims directed as ‘Computer Programme per se’: Claims which are directed towards computer programs per se are excluded from patentability” (para 21). It held: “In terms of the aforesaid CRI” (“Computer Related Inventions”) “Guidelines, an ‘algorithm’ is a mere sequence of instructions or set of rules or procedures or any sequence of steps and is not considered to be subject matter eligible for the grant of a patent. Further, a ‘computer programme per se’ stored as instructions in a computer memory in a computer-readable medium would also not be an eligible subject matter for the grant of a patent.” (paras 21–22)
5. Technical effect on the hardware. “Therefore, in terms of Section 3(k) of the Act, an ‘algorithm’ or ‘computer programme per se’ is not patentable. Further, while assessing the patentability of ‘computer programme per se’ under Section 3(k) of the Act,” ... “the Controller has to see whether the invention results in a technical effect or a technical advancement of the hardware.” (para 23)
6. The line in Lava. “The scope of patentability of ‘algorithms’ and ‘computer programme per se’ under Section 3(k) of the Act was examined by me in Lava (supra).” The Court reproduced its view there: “After analysing the CRI Guidelines and the aforementioned judgments, I am of the view that the inventions that are solely directed towards algorithms, mathematical methods, business methods or are computer programmes per se, would not satisfy the test of patentability and would consequently not be inventions. However, an invention that merely incorporates algorithms, sets of instructions, mathematical or business methods within a method or system, and satisfies all the criteria for patentability, is not inherently non-patentable.” (para 24)
7. Microsoft. “In Microsoft Technology Licensing v. Controller of Patents & Designs, a coordinate bench of this Court, after considering the judgment in Lava (supra), held that for a software invention to overcome the bar under Section 3(k) of the Act, it has to have a technical transformation that significantly enhances the hardware functionality.” (para 25)
8. BlackBerry. “The aforesaid judgments in Lava (supra) and Microsoft (supra) were considered by a coordinate Bench in Blackberry v. Controller of Patents & Designs.” The Court reproduced: “Accordingly, it is evident that insofar as algorithms are 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.” (para 26) “Holding that the technical contribution of the subject matter of the patent application therein was solely covering a complex sequence of instructions without offering any technical effect or advancement on the hardware, the coordinate bench in Blackberry (supra) sustained the objection of the Controller under Section 3(k) of the Act.” (paras 26–27)
9. More than a sequence of instructions. “It is apparent from the judgments discussed above that for a software or computer programme to qualify as an eligible subject matter under section 3(k) of the Act, it should be more than a mere sequence of instructions and should result in significant technical effect or advancement of the hardware.” (para 28)
10. Generic hardware. “Applying the rationale of the aforesaid cases to the facts of the present case, it is clear that the invention claimed in the subject patent application utilizes conventional and generic computer hardware components which implement the computer programme used to connect to the peer-to-peer network and issue searches, performing standard operations where a sequence of instructions is given by the user to achieve the desired result of profiling and finding the relevant information and users associated with the same.” (para 29)
11. Keyword search and profiling. “After examination of the Complete Specification along with the Claims, in my view, the invention claimed in the subject patent application is merely enabling a search within a peer-to-peer network. The function of search is being performed based on the keywords given by the user, which reflects conventional ‘computer programme’ behaviour. Therefore, it cannot be stated that the ‘computer programme’ is enhancing the functionality of the hardware. Furthermore, the profiling aspect of the invention, which uses keyword lists to search for specific types of users or data, is abstract in nature and lacks any technical character.” (para 30)
12. System claims and method claims. “As a result, the features claimed in Claims 1 to 7 fall under the category of ‘computer programme per se’, and Claims 8 to 10 fall under the category of ‘algorithms’. Therefore, they will collectively fall within the scope of excluded subject matter under Section 3(k) of the Act, being directed towards a mere ‘algorithm’ or ‘computer program per se’ without any demonstrable technical advancement.” (para 31)
13. Lava and Microsoft distinguished. “Therefore, I am unable to accept the submission of the appellant that the subject invention demonstrates a technical effect or a technical advancement to the hardware, which takes it beyond the realm of an ‘algorithm’ or ‘computer programme per se’, as prescribed in Section 3(k)of the Act.” (para 32) “In my considered view, the appellant’s reliance on the judgments in Lava (supra) and Microsoft (supra) is misplaced. In fact, 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. The invention claimed in the patent application is a mere sequence of instructions stored in hardware without solving any technical problem or offering any technical advancement to the hardware.” (paras 32–33)
14. Disposition. “Accordingly, for the reasons discussed above, there is no error in the finding of the Controller that the subject patent application cannot be granted in terms of Section 3(k) of the Act.” (para 35) “Accordingly, the present appeal is disposed of” (paras 35–36)

What the court did not decide

“In view of my conclusion that the subject patent application has rightly been refused by the Controller under Section 3(k) of the Act, I need not examine the sustainability of the rejection under Section 2(1)(j) of the Act.” (para 34)

Subsequent treatment

• Followed — In Esteve Pharmaceuticals v Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 118/2022, decided on 7 August 2026, the Delhi High Court, having upheld the refusal for lack of inventive step, held that “there is no requirement of examining the other objections raised under Section 3(d) and 3(e) of the Act. (See: Kroll Information Assurance, LLC vs. The Controller General of Patents, C.A.(COMM.IPD-PAT) 439/2022).” (para 41)