Microsoft Technology Licensing LLC v Assistant Controller of Patents and Designs (2024)

Summary

“The appellant herein, having been refused to have its Computer Related Invention” ... “patented by the Patent Office under Sec.3(k) of the Patents Act, 1970, has approached this Court with this appeal. The appellant’s invention is titled ‘Delegating Instant Messaging Sessions’. In its application, the appellant has made as many as 20 claims.” (p 2) “In the operative portion of the impugned order of the respondent, it is stated that ’these programs do not have further technical effect going beyond the ’normal’ interactions between the program and the general purpose hardware’.” (p 2) The appellant submitted that the Patent Office’s earlier guidelines “required not only novelty in the software, but also in the hardware for a software to be patented” and that the “Revised Guidelines for Examination of Computer Related Inventions, 2017” had “dropped the need for a novel hardware as a requirement to patent a software.” (para 2.1)

The Court considered it “apposite to refer to the following opinion of the Delhi High Court on the subject” (para 3), reproducing passages from “Ferid Allani Vs Union of India and Ors.” and “Microsoft Technology Licensing, LLC Vs The Assistant Controller of Patents and Designs” (para 3). It held that “The effect of these authorities read alongside the ratio in HTC Europe Co Ltd. Vs Apple Inc.” ... “provides the parameters which shall define the approach of the Patent Controller while dealing with any computer related inventions” (para 3), and that “In the instant case, the Patent Office has missed the signposts, and has travelled backward in time to rely on what 2016 guidelines provide notwithstanding its reference to the subsequent guidelines framed in 2017.” (para 4) The Court set “aside the order of the Patent Controller dated 14.12.2020 in Application 7743/CHENP/2009, and remands the matter for denovo consideration.” (para 5) “The appeal is allowed accordingly. No costs.” (para 6)

What the court decided

1. The approach to computer related inventions. “The effect of these authorities read alongside the ratio in HTC Europe Co Ltd. Vs Apple Inc.” ... “provides the parameters which shall define the approach of the Patent Controller while dealing with any computer related inventions. All it requires to do is to evaluate if there is any technical effect involved in the CRI” (“Computer Related Invention”), “or is there any technical contribution, dehors any hardware.” (para 3)
2. Ferid Allani on “per se”. Among the authorities the Court so read was the holding of the Delhi High Court in Ferid Allani, reproduced by the Court, that “The bar on patenting is in respect of ‘computer programs per se....’ and not all inventions based on computer programs” 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 3)
3. The 2016 and 2017 guidelines. “In the instant case, the Patent Office has missed the signposts, and has travelled backward in time to rely on what 2016 guidelines provide notwithstanding its reference to the subsequent guidelines framed in 2017.” (para 4)
4. Remand for de novo consideration. “In conclusion, this Court is constrained to set aside the order of the Patent Controller dated 14.12.2020 in Application 7743/CHENP/2009, and remands the matter for denovo consideration.” “The appeal is allowed accordingly. No costs.” (paras 5–6)
5. Procedure. Another Controller. “To save embarrassment to the Controller who has passed the impugned order, this Court now requires any other Controller to consider the application of the appellant. This Court further directs that the Controller who may now take cognizance of the appellant’s application to dispose of the same as expeditiously as possible.” (para 5)

Subsequent treatment

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