Fried Allani Vs Union of India

Ferid Allani Vs Union of India & ORS

The case may open new door for patenting on technologies such as Blockchain, Machine Learning, Artificial intelligence, other software innovations in India.

Dec 30, 2019

The present case Fried Allani Vs Union of India & ORS challenges the order of Intellectual Property Appellate Board (IPAB), which confirms the rejection of patent application under 3(k).

As per Section 3 of the Indian Patent Act 1970 (hereinafter the Patent Act), bars the certain subject matters for securing a patent right. Various judgments by the Controller general of the Patent, IPAB and honourable courts (e.g. high court and supreme court) help in understanding the scope of the section 3. Specifically, two sub sections viz. section 3(d) and section 3(k) are prominent as they deal in medical domain and computer programme based inventions, respectively.

The section 3(k) of the Patents Act precludes any invention related to “a mathematical or business method or a computer program per se or algorithms”. The manual of patent office practice and procedure (version 3.0, March 1, 2019) specifically states that under the provision of Section 3(k), mathematical methods, business methods, computer programmes and algorithms are not patentable subject matter. The learned controllers cite this section for the rejection of frivolous patent applications.

The recent verdict in case of Ferid Allani (applicant) vs Union of India, by Hon'ble Delhi High Court on patentable subject matter related to computer related invention clarifies ambit and complexity of section 3(k). The applicant had filed Indian patent application IN/PCT/2002/705/DEL on 17/07/2002. The learned controller in First examination report (FER) on dated 21/09/2005 rejects the claim under section 3(k). The applicant filed writ petition on 25th Feb 2005 in Delhi High Court to pray to direct the Patent Office to provide reasons for the rejection.

On 20th March 2008, the applicant submitted that invention does not come under the scope of 3(k) as the invention involves a technical effect and hardware elements.

As per Computer Related Inventions (CRIs) guidelines 2013, technical effect is described as follows:

“Technical Effect It is defined for the purpose of these guidelines as solution to a technical problem, which the invention taken as a whole, tends to overcome. A few general examples of technical effect are as follows:

Higher speed

Reduced hard-disk access time

More economical use of memory

More efficient data base search strategy

More effective data compression techniques

Improved user interface

Better control of robotic arm

Improved reception/transmission of a radio signal”

The applicant states that the claimed invention provides quicker and easier use of accessing information on the Internet (than the known methods) i.e. “technical effect”. Further, the invention also implements hardware elements (e.g. processor, input/output device, memory unit etc.). Furthermore, the applicant submitted that combination of the hardware and the executable instructions drastically reduces mean time required for accessing searched information.

On Nov 18th 2008, the Patent Office in detailed order again rejected the claims under section 3(k). Thereafter, the applicant filed appeal against the impugned order of the controller in IPAB. However, the IPAB also rejects the appeal and stated that the patent application fails to disclose any technical effect or technical advancement.

The applicant had filed application in the Delhi High Court to challenge the decision of IPAB and/or controller.

In this case, the court had greatly relied on the CRI guidelines as suggested by Patent Office, and amendment history of section 3(k), in particular emphasis was added on the word “per se” which was based on a Report of the Joint Committee on the Patents (Second Amendment) Bill, 1991. The report suggests that legal position of the computer based invention in India is similar to the Europe having similar provision, Article 52 of the European Patent Convention. The European Patent Office (EPO) and other Patent Office greatly emphasized `technical effect‟ and “technical contribution” for determination of the patentability.

The court has observed that the patent application deserves to be considered for re-examination (and also consider section 3(k) relevant precedent cases) and directed that the Patent Office would re-examine and a decision on the patent shall be taken within two months.

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