Raytheon Company v Controller General of Patents and Designs (2023)

Summary

“The present appeal was originally filed before the IPAB in the year 2020 and transferred to this Court upon the enactment of the Tribunals Reforms Act, 2021.” (para 2) It “has been filed under Section 117A of the Patents Act, 1970” ... “by the Appellant- Raytheon Company challenging the impugned order dated 17th October, 2019 by which the Appellant’s application for grant of a patent has been refused by the ld. Assistant Controller of Patents and Designs” (para 3). “The patent application of the Appellant bearing application number 4075/DELNP/2007 titled ‘Scheduling in a High-Performance Computing System’” was “filed before the Indian Patent Office on 30th May, 2007 as a PCT national phase application” and “The impugned order refused the grant of the subject patent on the following grounds” of “Lack of inventive step” and “Non-Patentability under Section 3(k) of the Act.” (paras 3–4) The appellant submitted that “the primary challenge being pressed is on the aspect of the consideration of the wrong guidelines for examination of Computer Related Inventions” and that “the present appeal is a fit case for remanding to the Controller for a fresh consideration on the basis of the 2017 version of the CRI” (“Computer Related Invention Guidelines”) “Guidelines.” (para 17)

The Court held that “the guidelines which have been taken into consideration for examining the application are the guidelines which were issued by the Patent Office on 19th February, 2016” (para 18) and that “These guidelines were replaced in 2017” (para 19). “Insofar as the novel hardware requirement is concerned, it is now well-settled that the said requirement is not to be insisted upon in applications relating to inventions of computer programs.” (para 20) “The requirement of novel hardware is a higher standard which lacks any basis in law.” (para 21) “The patent office was in error by following the inapplicable 2016 Guidelines. Accordingly, the impugned order is not sustainable and the appeal is allowed. The impugned order is set aside. The subject patent application of the Appellant shall now be examined afresh without insisting upon the novel hardware requirement.” (para 22)

What the court decided

1. The guidelines the order applied. The impugned order set out as test indicators that “If the contribution lies in the field of computer program, check whether it is claimed in conjunction with a novel hardware” (para 17). The Court held: “A perusal of the above would clearly show that the guidelines which have been taken into consideration for examining the application are the guidelines which were issued by the Patent Office on 19th February, 2016.” (para 18) “These guidelines were replaced in 2017” (paras 17–19)
2. The novel hardware requirement. “Insofar as the novel hardware requirement is concerned, it is now well-settled that the said requirement is not to be insisted upon in applications relating to inventions of computer programs. The manner in which such applications are to be examined and the interpretation of Section 3(k) is now settled by this Court in Ferid Allani (supra) and Microsoft (supra).” (para 20) “The requirement of novel hardware is a higher standard which lacks any basis in law.” (paras 20–21)
3. Technical contribution or technical effect. Among the passages the Court reproduced from Ferid Allani v Union of India was 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 20) The Court held: “As can be seen from the above extracts in case of computer related inventions, the patent office needs to examine if there is a technical contribution or as to what is the technical effect generated by the invention as claimed.” (paras 20–21)
4. The question for this invention. “In the present case, it needs to be examined as to whether the system sought to be patented reduces the time period in scheduling job execution in HPC” (“High-Performance Computing”) “system.” (para 21)
5. The order not sustainable. “The novel hardware standard existed in the 2016 CRI” (“Computer Related Invention Guidelines”) “Guidelines which have been replaced by the 2017 CRI Guidelines. The patent office was in error by following the inapplicable 2016 Guidelines. Accordingly, the impugned order is not sustainable and the appeal is allowed. The impugned order is set aside.” (para 22)
6. Procedure. Fresh examination. “The subject patent application of the Appellant shall now be examined afresh without insisting upon the novel hardware requirement. Considering the time that has already lapsed since the filing of the present patent application, it is directed that the application shall now be examined within three months from the date of receipt of this order and appropriate orders shall be passed by the Patent Office.” (para 22) “The Appellant is permitted to file updated Form-3.” (paras 22–23)

Subsequent treatment

• Followed — In BlackBerry v Assistant Controller (2024) the Delhi High Court, citing this judgment as 2023:DHC:6673 and reproducing paras 20 to 22, held that “this Court has clarified that Computer Related Inventions (CRIs) cannot be tested on the fulcrum of requirement of inventive hardware, as the same is a higher standard which lacks any basis in law” (para 29).