Madras High Court: Invention Using Algorithms & Computer Programmes Which Results In Technical Contribution Not Excluded U/S 3(K) Patents Act

The Madras High Court held that an invention which uses algorithms and computer programmes and results in the technical contribution, is not excluded from patentability under Section 3(k) of the Patents Act, 1970.

The Court held thus in a Transfer Civil Miscellaneous Appeal (TCMA) filed under Section 117-A(2) of the Patents Act, seeking to call for the records of the patent application.

A Single Bench of Justice Senthilkumar Ramamoorthy observed, “… the claimed invention uses algorithms and computer programmes, but such use results in the technical contribution and effect of reducing query response time, allowing users to pose multiple ad-hoc queries at a time to generate data lineage diagrams by allowing the user to select a data item, determine the associated selection configuration file, initiate a selection action that identifies related data items of different iterations, feed the query results to the diagram generator, and follow a looping process that generates further related data items. These contribute to the technical character of the claimed invention resulting in a data relationship diagram representing data lineage consisting of graph and input and output field. In light of this, I find that the claimed invention is not excluded from patentability under Section 3(k) of the Patents Act.”

The Bench noted that the claimed invention involves technical considerations of reduction of query response time by eliminating the resort to a tedious and time-consuming step-by-step manual process and allowing the user to pose multiple ad-hoc queries related to data lineage or type of data relationship simultaneously, and enabling retrieval of such information in a user-configurable manner.

Advocates Vineet Rohilla and D. Subbin appeared on behalf of the Appellant, while Special Panel Counsel (SPC) S. Diwakar appeared on behalf of the Respondents.

Brief Facts

The Appellant company assailed an Order which rejected its patent application in respect of its claimed invention titled “Graphic Representations of Data Relationship”. The said application was filed as a national phase application of the Patent Co-operation Treaty (PCT), claiming priority form US Patent Application. Pursuant to the Appellant’s request for examination in 2012, the First Examination Report (FER) was issued in 2018.

In the FER, the Respondent-Controller of Patents and Designs raised objections on the grounds of lack of novelty and inventive step under Section 2(1)(j) of the Patents Act. The Appellant filed a response to the same along with amended claims and thereafter, the Respondent issued hearing notices raising objection on certain grounds. After hearing took place, the Respondent issued the impugned order rejecting the application by retaining objections in respect of lack of novelty and inventive step. This was under challenge before the High Court.

Reasoning

The High Court in view of the above facts, said, “The use of the phrase 'technical advance over existing knowledge' in Section 2(1)(ja) underscores the necessity to test the existence of technical advance with reference to the knowledge existing on the priority date. Consequently, the need for examination of prior art. As a result of the use of the disjunctive 'or' before 'having economic significance', it is evident that 'technical advance over existing knowledge' is not an essential pre-requisite and that economic significance may be established instead; subject, however, to the overarching requirement of the feature of the invention not being obvious to a PSITA.”

The Court added that for purposes of establishing that the claimed invention is not excluded from grant by Section 3(k), including for purposes of verifying if there is a technical contribution, it is not necessary to draw a comparison with existing knowledge although such comparison becomes necessary thereafter to satisfy the requirements of Section 2(1)(j).

“… a chartered accountant, who is well-versed with accounting principles, may be described as technically sound. In stock market parlance, almost counter-intuitively, the expression technical analyst is used for a person who predicts future stock prices on the basis of historical stock price movement patterns rather than the performance of the company concerned”, it remarked.

The Court was of the view that while technical contribution focuses on whether one or more features of the claimed invention adds technically to the field, technical effect is focused on the technical impact or outcome, if any, thereof.

“Technical character and nature focus on the intrinsic qualities of the feature. Obviously, much of the time, there would be considerable, if not complete, overlap and the use of any one of these words instead of another would have no material impact”, it noted.

The Court enunciated that in order to arrive at a rational decision on whether there is a technical contribution or technical effect in the claimed invention, it becomes necessary to examine the complete specification on the working of the claimed invention closely.

Conclusion

“… all features of the claimed invention are not present in D1. Hence, the claimed invention satisfies the requirements of novelty. Whether the delta between the claimed invention and D1 would be obvious to PSITA is, however, a distinct matter that I consider next”, it observed.

The Court, therefore, concluded that the claimed invention satisfies the novelty and inventive step requirements under Section 2(1)(j) and as a corollary, the impugned order cannot be sustained.

Accordingly, the High Court allowed the Appeal, set aside the impugned order, and directed that the patent application shall proceed to grant on the basis of the last submitted claims.

Cause Title- Ab Initio Technology LLC v. The Controller of Patents & Designs & Ors. (Neutral Citation: 2025:MHC:2579)

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