Patentability of Computer Software

The Patents Act, 1970 (“Act”) includes a computer programme per se as a non-patentable invention.  The patentability of Computer Related Inventions (“CRIs”) or software patents has always been much discussed issue in India. In this regard, the decision of the Delhi High Court in Ferid Allani v. Union of India and Ors. (Order dated December 12, 2019 W.P.(C) 7/2014 & CM APPL. 40736/2019) is instructive.

Ferid Allani, a citizen of Tunisia, had filed an Indian National Phase patent application for method and device claims relating to “accessing information sources and services on the web”. Mr. Allani had submitted that the objective of the invention is to provide a method and corresponding device for accessing information sources and services on the web.  He contended that his invention was quicker and easier to use than the methods known at the time. As a result, the invention provides a technical effect and requires integration with hardware. However, the application was rejected by the Indian Patent Office (“IPO”) stating that the subject matter of the application is not patentable under the Act.

Aggrieved by the decision of the IPO, Mr. Allani filed an appeal at the Intellectual Property Appellate Board (“IPAB”). However, the IPAB turned down the appeal stating that the application fails to disclose any technical effect or technical advancement. Ultimately, a writ petition was filed before Delhi High Court challenging the orders of IPO and the IPAB.  In the writ petition, it was claimed that Mr. Allani’s invention is more than a mere computer programme that is loaded onto the computer and the application does disclose a technical effect and technical advancement.

The Court observed that “In today’s digital world, when most inventions are based on computer programs, it would be retrograde to argue that all such inventions would not be patentable. Innovation in the field of artificial intelligence, blockchain technologies and other digital products would be based on computer programs, however, the same would not become nonpatentable inventions – simply for that reason. It is rare to see a product which is not based on a computer program. Whether they are cars and other automobiles, microwave ovens, washing machines, refrigerators, they all have some sort of computer programs in-built in them. Thus, the effect that such programs produce including in digital and electronic products is crucial in determining the test of patentability.”

The Court observed that “the words ‘per se’ were incorporated in Act so as to ensure that genuine inventions which are developed based on computer programs, are not refused patents”. The Court held that in light of the amendments to the guidelines with respect to CRIs and the judicial precedents in this regard, since 2013, the meaning of ‘technical effect’ has been clearly defined. Further, the Court observed that, for the test of patentability, it is crucial to determine the effect which a computer program produces; and held that if an invention demonstrates a “technical effect” or “technical contribution” it is patentable even though it may be based on a computer program. Lastly, the Court directed the IPO to re-examine Mr. Allani’s application in the light of the observations made in its order, the judicial precedents, the guidelines and the settled practices of the IPO.