The Delhi High Court has held that an invention should not be deemed a computer program per se merely because it involves algorithms and computer-executable instructions. According to the Court, rather, it should be assessed based on the technical advancements it offers and its practical application in solving real-world problems.

The Court observed that if a computer-based invention provides a technical effect or contribution, it may still be patentable, and that technical effect or contribution can be demonstrated by showing that the invention solves a technical problem, enhances a technical process, or has some other technical benefit.

The case in Microsoft Technology Licensing, LLC v. Assistant Controller of Patents and Designs involved interpretation of words ‘per se’ as in Section 3(k) of the Patents Act, 1970 which lists ‘computer programs per se’ as not patentable. The Controller in its decision impugned before the High Court had held that the claims were implemented on computer and were computer-executable instructions/algorithms performed on a general-purpose computing device, and hence covered under the phrase ‘computer programs per se’ – thus not patentable.

Taking note of legislative history of the provision, Statement of Objects and Reasons to the Patents (Amendment) Act, 2005, the Report of Joint Parliamentary Committee on Patents (Second Amendment) Bill, 1999, the parliamentary debates, etc., the Court observed that the said term [per se] was added to make it clear that ‘computer programs as such’ are non-patentable. It noted that the intent of the amendment was to allow grant of patents to Computer Related Inventions (CRIs) that involve a novel hardware component or provide a technical contribution to the prior art(s) beyond the program itself.

The High Court in its decision dated 15 May 2023 was of the view that the fact that the claimed invention involved a set of algorithms executed in a pre-defined sequential manner on a conventional computing device does not necessarily imply that it lacks a technical effect or contribution. The Court noted that it is possible that the invention provides a technical solution to a technical problem, and the computer program use is merely a means to achieve the technical solution. According to the Court, if the subject matter is implemented on a general-purpose computer, but results in a technical effect that improves the computer system’s functionality and effectiveness, the claimed invention cannot be rejected on non-patentability as ‘computer program per se’.

The patent in question provided for a technique for secure authentication of a user while accessing one or more sub-location(s) in a network address which effectively foils the attempts of a malicious user to gain access to network sub-location(s) by illegally obtaining cookies from another user.

On the facts of the case, the Court noted that the technical contribution of the invention in question was that it simplified user interaction with content received from feeds and enhanced the security of accessing sub-locations of network locations while streamlining the user experience. The Court in this regard also rejected the contention that since the invention was at the user-interface level, the same was not patentable. It observed that the technical solution [in the patent in question] went beyond the user-interface level, involves complex network-level communication protocols, and provided a technical effect and contribution that is patentable. 

Setting aside the Order of the Controller, the Court also noted that 2017 Computer Related Inventions Guidelines, issued by CGPDTM, acknowledged the challenges and complexities surrounding the examination of CRIs, and underscored the need to focus on substance [underlying technical contribution] rather than the form.

It may be noted that the High Court further directed the Indian Patent Office/Controller General of Patents, Designs and Trade Marks to frame certain signposts in this regard, considering the Indian legal framework. It was of the view that providing examples of both patent-eligible and non-eligible inventions in the guidelines, as provided by the European Patent Office as well as United States Patent and Trademark Office, would be beneficial.