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

Summary

“The appellant filed Indian Patent Application No.5584/CHENP/2010 on 07 September 2010 for the grant of patent for an invention titled ‘Associating Command Services with Multiple Active Components’.” (p 2) After the hearing notice objected that “amended claims 1-12 lack inventive step under section 2(1)(ja) of the Patents Act in view of prior arts D1, D2 and a newly cited prior art D4” and that “amended claims 9-12 are excluded under section 3(k) as they constitute computer programme per se” (para 2), “the application was rejected by impugned order dated 24 January 2020.” (para 2) The Assistant Controller had held that “the subject matter of claims 1-11 relates to ‘computer programs per se’ and falls within the scope of section 3(k)” (para 21). The Court first turned “to the question whether the claimed invention is a computer programme per se and, therefore, excluded from patent eligibility under Section 3(k) of the Patents Act.” (para 20)

After examining the four exclusions in section 3(k) and its legislative history, the Court held that “even when the claimed invention relates to a CRI” (“computer related invention”), “if it results in a technical effect that improves the system’s functioning and efficacy(effect on hardware), or provides a technical solution to a technical problem and is, therefore, not limited in its impact to a particular application or data set, it would surmount the exclusion under section 3(k) of the Patents Act.” (para 36) It found that the claimed commanding system “possesses a ’technical effect’” and “As a result, it is patent-eligible under Section 3(k) of the Patents Act.” (para 37) On inventive step it held that “D2 is not analogous prior art” (para 43), “that D4 is a non-analogous prior art in the obviousness analysis” (para 45), and that the claimed system was “a technical advancement which would not be obvious to PSITA” (“Person Skilled in the Art”) (para 51). “Hence, (T)CMA(PT) 49 of 2023 is allowed by setting aside the impugned order. For reasons set out above, the claimed invention shall proceed to grant on the basis of amended claims 1-11. There shall be no order as to costs.” (para 52)

What the court decided

1. The four exclusions in section 3(k). “Section 3(k) deals with four exclusions: (i) a mathematical method; (ii) a business method; (iii) a computer programme per se; and (iv) algorithms. It is of significance to notice that the exclusion with respect to a computer programme in section 3(k) is qualified by the expression ‘per se’, whereas such qualification is not prescribed in respect of the other exclusions.” (para 22)
2. Mathematical and business methods. The Court held, “in my view, correctly - that the mathematical method exclusion is intended to exclude the mere expression of an intellectual exercise, such as a method of calculation, the formulation of equations and the like.” “A business method is a method of operating a business enterprise or part thereof.” “What if a computer related invention” (“CRI”) “is used in a business method? In my view, it would not fall within the business method exclusion because the monopoly claim is being sought for the CRI and not for the business method. The patent eligibility of such CRI may, nonetheless, be tested against the computer programme per se or algorithms exclusions” (para 23)
3. “Computer programme” and the Copyright Act. Of the definitions of computer and computer programme in “Sections 2(ffb) and 2(ffc)” of “the Copyright Act, 1957” (para 24), the Court held: “I conclude that this definition is applicable in the context of the Patents Act, including for appreciating what computer programme per se means.” (para 24)
4. Algorithms. “An algorithm may be defined as a set of rules or instructions for solving a problem, typically through a sequence of steps or operations. Devising an algorithm would also, therefore, be an intellectual exercise and intellectual property protection would be limited to copyright protection, subject to originality, for the form of expression.” (para 25)
5. The legislative history of “per se”. Of “The Joint Parliamentary Committee Report (the JPC Report)” the Court held that “Two aspects of the JPC Report should be taken note of: something ancillary to or developed on a computer programme is not intended to be excluded from patent protection; and the expression ‘per se’ was equated with the expression ‘as such’.” (para 26) Of the clarification proposed in 2004 and 2005 and not enacted, it held: “The upshot of this discussion is that software related patent applications cannot be measured solely against the benchmarks of technical application to industry or combination with hardware. Parliament’s intention was clearly not to lower the bar to the extent indicated in the above mentioned Bill.” (paras 26, 29)
6. Construing “computer programme per se”. “Even so, there is sufficient basis in text and legislative history to conclude that Parliament’s intention was not to exclude all CRIs from patent eligibility.” “Put more specifically, if it is no more than ‘a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result’, it would be patent-ineligible; whereas, if it has an effect that transcends the above benchmark, it becomes patent-eligible.” (para 30)
7. The signposts. Of the signposts for identifying technical effect, the Court held that “While deciding whether a claimed invention is patent eligible or excluded on the above standards, it is important to be mindful that these are non-exhaustive signposts and not statutory prescriptions. Consequently, they provide guidance but are not intended to be applied rigidly.” (para 33)
8. The test. “Thus, even when the claimed invention relates to a CRI, if it results in a technical effect that improves the system’s functioning and efficacy(effect on hardware), or provides a technical solution to a technical problem and is, therefore, not limited in its impact to a particular application or data set, it would surmount the exclusion under section 3(k) of the Patents Act.” (para 36)
9. The claimed commanding system. “This enables the outflow of commands to unrelated applications from a single command surface removing the necessity of multiple command surfaces.” “Thus, the claimed commanding system is more than a set of instructions in code or any other language and is not limited in impact to a particular application or data set, i.e. it is application/data set agnostic.” “This eliminates the need for multiple command surfaces, reduces the use of memory space in the system and augments efficiency. As a result, it is patent-eligible under Section 3(k) of the Patents Act.” (para 37)
10. Enablement under section 3(k). “The respondent also concluded that the claimed invention fails to address ’enablement’. This is not a relevant consideration under Section 3(k) of the Patents Act and, therefore, is not a valid ground for rejection under the said provision.” (para 37)
11. Analogous prior art. Of “In re Bigio, 381 F.3d 1320” the Court recorded “two separate tests to determine whether a reference qualifies as ‘analogous prior art’- (1) the reference is from the same field of endeavour as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor” (para 40), and applying them held that D1 “qualifies as an analogous prior art” (para 41), that “D2 is not analogous prior art and does not constitute a relevant reference in deciding whether the claimed invention lacks inventive step” (para 43), and “that D4 is a non-analogous prior art in the obviousness analysis.” (paras 40–43, 45)
12. Procedure. Prior art first cited at hearing. “The newly cited document D4 was referred to in the hearing notice dated 26/09/2019, and the hearing was fixed on 1/11/2019 thereby giving the appellant more than a month’s time to respond to the newly cited document D4. The appellant also responded to D4 both in oral and written submissions at the hearing stage. Because there was sufficient time and adequate opportunity for the appellant to reply to the newly cited prior art, D4 cannot be eschewed in view of principles of natural justice.” (para 44)
13. Inventive step over D1. “Therefore, the PSITA” (“Person Skilled in the Art”) “is a software engineer conversant with the functioning of commanding systems and armed with knowledge of hardware systems or a team with such skill set.” (para 38) “In other words, the command surface of the claimed invention conceives of a system which facilitates the outflow of command from the command surface to the intended applications via different components. On the other hand, D1 relates to a system wherein inflow of input command to the command handler from the commanding nodes and services takes place, aided by the processor.” (para 50) “Such a commanding system results in a shared command surface that accommodates the functioning of various unrelated applications, a technical advancement which would not be obvious to PSITA. Hence the invention passes the inventive step test under section 2(1)(ja) of the Patents Act, 1970.” (paras 38, 50–51)
14. Relief. “Hence, (T)CMA(PT) 49 of 2023 is allowed by setting aside the impugned order. For reasons set out above, the claimed invention shall proceed to grant on the basis of amended claims 1-11. There shall be no order as to costs.” (para 52)

Subsequent treatment

• Followed — In Caleb Suresh Motupalli v Controller of Patents (2025) the Madras High Court, the same Judge sitting, recalled that he had “concluded in Microsoft Licensing Technology LLC v Assistant Controller of Patents, 2024:MHC: 2537, that if the claimed invention has a technical effect, which is not limited to an application or a data set, improves the functioning and efficacy of the system and has an effect on the hardware, it would surmount the prohibition under the provision.” (para 34)
• Explained — In Ab Initio Technology v Controller of Patents (2025) the Madras High Court, the same Judge sitting, reproduced this judgment’s analysis of the exclusions (para 40) and said: “In Microsoft MHC, I had conflated one of the AT&T signposts, as correctly critiqued in Ramanujan’s Patent Law. On revisiting the subject, I find that the Indian approach is substantially in line with the EPO Board’s jurisprudence but not with that of courts in the UK.” (para 47)
• Followed — In BlackBerry v Controller of Patents (2026) the Delhi High Court reproduced paras 36 and 37 of this judgment, cited as “2024 SCC OnLine Mad 2785” (para 39), and held that the invention before it “does not result in a ’technical effect’ that improves the systems functionality and efficacy at the hardware level.” (para 45)