IPAB’s Ferid Allani order is a boost to software patents filed in India

No wonder, computer programs are a major part of innovations around us than ever before. As the advancement in technology continues to progress, it is quite difficult to find technological innovations that do not have a software component in association with them. In this context, Ferid Allani, a Tunisian citizen had remarkable history regarding his application relating to software patent innovations in particular section 3(k) of the Indian IP landscape. In the present case, more than nineteen and half years are passed in deciding the present application by raising objections. The term of a patent in India is twenty years. The said patent is expiring in December 29^th, 2020. The recent IPAB order dated July 20, 2020 in the case of Ferid Allani (applicant) v/s Assistant Controller of Patents, clarifies the ambit and complexity of section 3(k) pertaining to  patentable subject matter related to computer related invention..

Background of the invention: The application is titled “Method and device for accessing information sources and services of the web”. The objective of the invention is to provide easy, quick and direct access to required sources and services on the internet (web) without wasting precious network resources, such as bandwidth.

Brief prosecution history of the application from filing to grant:

• Ferid Allani filed a provisional patent application on December 30, 1999 bearing number 99/16704. Thereafter, a PCT application was filed on December 29^th, 2000 as PCT/FR2000/003759 which entered India as IN0705/DELNP/2002A on July 17^th, 2002. 
• A request for examination was filed for IN0705/DELNP/2002A and a first examination report (FER) was issued on 21^st February, 2005 with objections corresponding to section 2(1) (j) in view of a prior art D1. The applicant’s agent submitted a response to the FER on 17^th September 2005.
• A second examination report (SER) was issued on 21^st September, 2005 with the objection of non-patentability of claims under section 3(k) of the Patent Act. Since no response to the SER was filed, the application was deemed to have been abandoned under section 21(1) of the Patent Act.
• Challenging said order of abandonment, the Petitioner filed a writ petition on May 2^nd, 2006. The Petitioner submitted that the Act and the rules are silent on the time limit after which it is to be considered that the Applicant failed to put an application in order for grant of the patent after a “second examination or more statement of objections” are issued by the patent office.
• On February 25^th, 2008 Hon’ble High Court directed the Indian Patent Office to review the application by providing the applicant an opportunity of hearing.
• The response to the SER dated September 21^st, 2005 was filed on March 20, 2008. Thereafter, a hearing was scheduled for August 22, 2008, which was attended by the applicant’s agent.  Thereafter, the applicant’s agent submitted written submissions on August 12^th, 2008. However, the Controller, by an order dated November 18, 2008 refused the application.
• In response to this refusal, an appeal was filed under section 117A(2) of the act against said order dated November 18, 2008 before the IPAB on February 20, 2009. IPAB dismissed aforementioned appeal on the grounds that, the application does not disclose any technical effect or technical advancement.
• The applicant filed a writ petition before the Hon’ble Delhi High Court on December 19, 2013 in view of said dismissal of appeal, stating that “the invention is more than a mere software that is loaded onto the computer and the application does disclose a technical effect and technical advancement”. In response, Delhi High Court on December 12, 2019 directed the Indian Patent Office to re-examine the said patent application and stated that an invention would not become non-patentable simply for simply for that reason that it is rare to see a product which is not based on a computer program and that the effect of such programs in digital and electronic products is crucial in determining the test of patentability.
• On January 01^st, 2020 the Patent Office heard the case and on February 7,2020 rejected the application on the same ground. This order had been challenged before the IPAB in the present matter.
• The IPAB in its order dated July 20, 2020 granted the patent.

Issues:

• Whether the patent application should be granted under Section 2(1) (j)of the Patents Act, 1970; and
• Whether the patent application must be exempted by the operation of Section 3(k) of the Patents Act, 1970.

Contentions provided by Applicant:

• During the course of prosecution, the Applicant stated that the aforementioned goal of the claimed invention is achieved in a way that is quicker and easier to use than the methods known at the time of invention.
• The invention provides a technical effect and includes integration with hardware. On the internet, a web search engine allows a user to carry out a search for any particular information, so desired by the user. The search results are generally presented in a list of results, often referred to as search engine results pages (SERPs) and such results comprise a mix of links to web pages, images, videos, infographics, articles, research papers, and other types of files. Thus, a typical web search engine will access the internet and provide the user, on request, with results which were not previously available with user in near real time. It is submitted on behalf of Applicant that the present invention provides a forward-looking solution in the form of an ‘Efficient Search Strategy’ to overcome the problems encountered in the traditional search engines which existed in 1999.

Findings by the court:

• According to the findings of the Delhi High Court on December 12,  2019, the addition of the terms “per se” in section 3(k) was a conscious step. It was provided in the Report of the Joint Committee on Patents (Second Amendment) Bill, 1999 that:
• Hence, inclusion of the above phrase by the Patent (Second Amendment) Bill, 1999 to ensure that genuine inventions which are developed based on computer programs are not refused patents.
• The report of the Joint Parliamentary Committee 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 EPO and other Patent Office greatly emphasized “technical effect” and “technical contribution” for determination of the patentability.
• The present invention achieves “technical advantage” and exhibits “technical effect”. Bandwidth is utilized only once per request, thereby saving network resources and the mean time duration observed for accessing searched information is drastically reduced. 
• The Hon’ble High Court relied on legislative history behind section 3(k). The Court also relied on the Computer Related Inventions, 2013 (CRI guidelines, 2013) issued by the Patent Office which clearly stipulate the following indicators to provide a “technical effect”: “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 present invention falls under at least the following indicators of “technical effect”: higher speed, more economical use of memory and more efficient data base search strategy. The present invention is aimed at overcoming the limitations of existing inventions which conduct generalised searches and provide unclear information while consuming substantial amount of time and bandwidth, thereby achieving technical advantages over prior art.

Findings by the IPAB:

• The IPAB relied on contemplating technical solution intended to be solved by the patent application. The IPAB identified a key feature of the invention that is forming a well-constructed query which is to be emitted to the internet, which solves a technical problem of prior art technologies producing a technical effect of “reduction of bandwidth by the structured query”.

• The present invention reduces the mean time duration for accessing the searched information by users. As a matter of fact, user need not spend time in selecting and reviewing multiple search results as disclosed by other technologies in 1999.
• The present invention is also economical, as the internet bandwidth is consumed only once per search resulting in increased quality of internet services to users.
• One has to first construe the claims, then identify technical contribution provided by the claims.
• The definition of “technical effect” or “technical contribution” is to be taken from the guidelines relating to Computer Related Inventions, 2013 (CRI guidelines, 2013).
• The IPAB appeal was allowed and the patent was granted to Ferrid Allani.

Summary:

• Most of the inventions are based on computer programs” and “it would be retrograde to argue that all such inventions would not be patentable”.

• In light of the Hon’ble Delhi High Court’s direction that the Guidelines for grant of patents relating to the Computer Related Inventions are to be considered, along with the settled judicial precedents for granting the patent, as well as the fact that the present invention provides at least the aforesaid technical effects defined by CRI guidelines, the Patent ought to be granted.
• Therefore, without appreciating the technical effect produced by the present invention, the mere fact that a computer program is used for effectuating a part of the present invention, does not provide a bar to patentability.
• Thus, the invention MUST be examined as whole and the following factors are to be considered while deciding upon the patentability of such inventions-

1. technical effect achieved by it, and its
2. (ii) technical contribution. If the invention demonstrates a “technical effect” or a “technical contribution”, it is patentable even though it may be based on a computer program.

Conundrums of the case:

It shall be noted that the Computer Related Inventions, 2013 (CRI guidelines, 2013) were released on June 28^th, 2013. Since, the court relied greatly on these CRI guidelines, does it open a door for re-examination of the patents which were rejected prior to these guidelines which need to be re-examined as it happened in the present case? Likewise, if the new CRI guidelines are published in future, it may further open doors for old patents for re-examination? As a matter of fact, both High court and IPAB have declined to lucidly define the term “technical advancement”. The current conundrum can be eradicated if the term “technical advancement” is clearly defined rather than promoting “case by case analysis”. Such a stance can boost the number of software patents being filed in India and will encourage global players in the software industry to protect their software inventions in India.

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