Microsoft Technology Licensing LLC v Assistant Controller of Patents and Designs (2023)

Summary

“The present appeal is directed against order of the Assistant Controller of Patents and Design (Respondent) dated 18 November 2019” ... “under Section 15 of the Patents Act, 1970” ... “refusing Appellant’s patent application 1983/DELNP/2008 for the invention titled ‘FILTERING USER INTERFACE FOR A DATA SUMMARY TABLE’.” (para 1) “In the hearing notice, the Controller raised objections on the following grounds: (A) Section 2(1)(j) of the Act, asserting that the invention lacks inventive steps in light of the prior arts, cited as D1 to D4.” (para 2) The other objections were that the invention was “a ‘computer program per se’” under “Section 3(k)” and that the “subject matter of amended claims 1 to 9 are excluded as per Section 3(n) of the Act (presentation of information). However, the Controller finally rejected the application under Section 3(k) of the Act, without delving into the other objections.” (para 2) The Controller had reasoned that “the actual contribution of the invention solely lies in software and there is no specific hardware available in the claimed invention.” (para 3)

The Court held that “The Impugned Order is not legally tenable for several reasons” (para 4): that “Controller’s examination through the prism of 2016 Guidelines cannot be sustained and the subject invention must be re-examined” (para 4), that “the Controller has misapplied the decision of this Court in Telefonaktiebolaget LM Ericsson (PUBL) v. Intex Technologies (India) Limited” (para 5), and that “the Controller has wrongly assumed that absence of novel hardware renders computer programme to be inherently non-patentable.” (para 6) “Thus, the entire foundation of the Impugned Order is flawed and it deserves to be set aside.” (para 6) “The Impugned Order is quashed. The Controller shall re-consider the application and analyse the technical contribution and technical effect of the invention claimed in the subject application.” (para 7) “Allowed in the above terms.” (para 10)

What the court decided

1. The 2016 and 2017 Guidelines. “Firstly, the subject application has been examined relying upon Guidelines for Examination of Computer-Related Inventions (CRIs) of 2016, without noticing the revised guidelines of 2017” (“CRI 2017 Guidelines”) “which were in force on the date of passing of the Impugned Order.” The CRI 2017 Guidelines “cite the Joint Parliamentary Committee discussions on introduction of the term ‘per se’ with computer programme under Section 3(k) of the Act, which notes the legislative intent behind introducing the phrase ‘per se’.” “One of the key improvements in the CRI 2017 Guidelines is the increased focus on technical effect and technical contributions. The new guidelines emphasize that for an invention to be eligible for a patent, it must demonstrate a technical advancement and a technical contribution beyond the generic computer program.” “Thus, Controller’s examination through the prism of 2016 Guidelines cannot be sustained and the subject invention must be re-examined.” (para 4)
2. Ericsson v Intex. “Despite acknowledging the significance of technical effect and contribution as guiding principles in the evaluation of Computer-Related Inventions (CRIs), the Respondent fails to consider the Court’s observations that even a computer program may qualify for patent protection if it showcases a technical contribution to the field or delivers a discernible technical effect.” (para 5)
3. Novel hardware. “In the Court’s view, the Controller has wrongly assumed that absence of novel hardware renders computer programme to be inherently non-patentable. This observation is erroneous as for technical effect and contribution in the field of computer programmes, conjunction with novel hardware may not be always be necessary. Under the 2017 CRI Guidelines, dependency on novel hardware is not mandatory for the patentability of computer-related inventions.” “In other words, even if an invention is purely software-based, it may still be considered patentable if it provides a technical solution to a technical problem and goes beyond conventional programming techniques. The focus is on the technical nature and technical effect of the invention rather than the presence of specific hardware components.” (para 6)
4. Remand directions. “The Impugned Order is quashed. The Controller shall re-consider the application and analyse the technical contribution and technical effect of the invention claimed in the subject application. This 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” ... “CRI 2017 Guidelines, Manual of Patent Office Practice and Procedure (2019), as also other judgments on this issue rendered by this Court.” (para 7)
5. Procedure. Time for the fresh decision. “Taking into account the relatively short lifespan of the potential patent, which is projected to expire as early as 2026, it is hereby ordered that a decision shall be reached within a timeframe of four months, starting from date of release of this order.” (para 8)
6. Procedure. The other objections on remand. “However, it is expected that the Controller shall, pass a comprehensive order dealing with other objections set out in the hearing notice while deciding the application afresh.” (para 9)

What the court did not decide

“The Court has not expressed any opinion on the other objections raised in the hearing notice.” (para 9)

Subsequent treatment

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