Court`s Inconsistent Approach on Granting of Patents

6th January, 2025 - 6:28 am Categories: Patents 0 Comments

Introduction

Recently Delhi High Court provided different reasoning regarding Patentability in computer inventions in the two different cases of a same party.

In one of the cases of Blackberry Ltd Vs Assistant Controller of Patents and Designs, the court dismissed the appeal of Appellant`s Patent application titled “Administration of Wireless System”

In the second case of Blackberry Ltd vs Controller of Patents and Designs, the court accepted the appeal of Appellant`s Patent application titled “Auto-Selection of Media Files”.

The judgement was given by the same bench of Delhi High Court which included the same party as appellant.

The judgement became a hot topic of debate in which court almost referred the same cases for the reasoning and provided different reasoning which showed inconsistent approach of the court.

Facts of the first case

In the first case, the appellant has filed an application for grant of Patent under Sec 6 of Indian Patents Acts 1970 titled “Administration of Wireless System” on 25^th July 2008 in Indian Patent Office (IPO).

The IPO released a First Examination Report on 28^th Dec 2015 and raised the objection citing that the invention is Non-Patentable under Sec3(k) of the act.

According to IPO, the invention did not include any inventive hardware features, it is just a combination of already functional softwares and set of instructions.

The appellant in reply asserted that objection of the IPO is irrelevant because the subject patent application is implemented by hardware units such as wireless devices, servers, and server interfaces which are essential for the invention.

However, despite filing the reply by appellant the Ld. Controller rejected the application and refused to grant patents on same previously mentioned ground.

Therefore, to challenge this order appellant filed an appeal in the court under Sec 117A of the act.

Court`s analysis and Judgement

After hearing the argument of both sides, the court found that-

• According to Sec 3(k) of the act,
• • • • A mathematical or business method or a computer programme per se or algorithms is not an invention.
• The Hon`ble Court referred a lot of cases and found a lot of aspects related to the case. Some of the major cases which court referred are-
• • • Lava International vs TLM Ericsson,2023: DHC:2698
    • Open TV Inc. vs The Controller of Patents and Designs,2023: DHC:3305
    • Microsoft Technology Licensing, LLC vs Assistant Controller of Patents and Designs,2024: DHC:3547

• The Court analysed that patent application has a technical contribution.
• This contribution has been arises out of the use of an algorithmic process that regulates the flow of information through a sequence of instructions.
• Therefore, it falls under the Sec 3(k) of the Indian Patents Act, which disqualifies inventions related to computer programme, mathematical methods and business methods.
• Therefore, court dismissed the appeal of the appellant and appellant was not provided patent for the invention.

Facts of the second case

In the second case, the same appellant filed an application for grant of patents under Sec 6 of the Act titled “Auto-Selection of Media Files’’ on 25^th July 2008 in Indian Patent Office.

The application made 12 claims which was related to managing media content in electronic devices. The application for invention was based on algorithms to select, and managing files based on the preferences of the user.

The IPO office again rejected the application on the ground that it is non patentable under Sec 3(k) of the act. The office stated that the invention merely a computer associated programme and doesn’t include any technical innovation.

Therefore, aggrieved by the order the appellant filed an appeal under Sec 117 of the Act.

Court`s Analysis and Judgment

The court focused on various aspect of the claims made in the appeal which includes –

• Randomised Selection Support
• Cache Manager Facility
• Metadata-Only Files
• Device-Specific Configuration
• Efficient Media Transfer

The Court also referred various cases which includes

• Ferid Allani v. Union of India & Ors, 2019 SCC OnLine Del
• Microsoft Technology Licensing v. Assistant Controller of Patents And Designs, 2023 SCC OnLine Del 2772
• Lava International v. TLM Ericsson, 2024:DHC:2698
• Microsoft Technology Licensing LLC v. The Assistant Controller of Patents And Designs, 2024:DHC:3547

The court concluded that the arguments made by appellant have merits.

The subject matter doesn’t not falls under Sec 3(k) of the act. It is not a merely combination of algorithms but it includes new innovation and subject to public use hence it should be protected.

Therefore, court ordered the IPO for grant of patent.

Conclusion

As cases aforementioned,it can be easily concluded that the court has inconsistent approach in grants of patents.

It is not only in IP Law but also in others law

It makes tougher to interpret the court’s procedure which creates a lot of. questions in the reader’s mind Due to this uncertainty it also questions the judgement passed by the court

Author: Sahil Srivastava, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References

Delhi High Court Emphasizes Due Application of Mind in Granting Patents – Blackberry Limited v. Assistant Controller of Patents and Designs

https://kandspartners.com/137215#:~:text=In%20the%20case%2C%20Blackberry%20Limited,media%20files%20based%20on%20available

https://www.lakshmisri.com/insights/articles/patentability-of-computer-related-inventions-court-s-inconsistent-approach-underscores-complexity-but-creates-uncertainty/

Judgement Copy of both cases of Delhi High Court dated  30^th August 2024 .