Allani Ferid v. Assistant Controller of Patents and Designs

Date of Decision: 20^th July, 2020 (IPAB)

Brief facts

On 17.07.2002, the Appellant had filed a patent application entitled “Method and Device for Accessing Information Sources and Services of the Web”.

On 19.11.2004, the Appellant requested for the examination for the patent application which was rejected on the ground that it lacked an inventive step. Following this, the Appellant filed a reply to the First Examination Report on 17.09.2005.

On 21.09.05, the Patent Office once again rejected the claims as being un-patentable under Section 3(k) of the Indian Patent Act, 1970 which states that: “a mathematical or business method or a computer programme per se or algorithm” is not an invention.

No response was filed against this, as a result of which the application was deemed to be abandoned.

On 02.05.2006, Appellant filed a writ petition challenging the order of abandonment. On 25.02.2008, the High Court directed the Patent Office to review the application providing necessary opportunity of oral/written hearing.

On 20.03.2008, the Appellant filed a response to the rejection and their agent appeared for hearing and submitted written submissions on 12.08.2008. The claims were rejected. On 18.11.2008, an appeal was filed before the IPAB but the appeal was dismissed.

On 19.12.2013, the Appellant filed a writ petition in the Delhi High Court who, on 12.12.2019, disposed off the petition and directed the Patent Office to re-examine the patent application and stated that an invention would not become non-patentable 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 27.01.2020 the Patent Office heard the case and on 07.02.2020 rejected the application on the same ground. This order had been challenged before the IPAB in the present matter. No one appeared on behalf of the Respondent who even failed to file the counter statement and written submission.

Background of the invention and the Intended problem it sought to resolve:

• The invention dates back to 1999 when the internet tech was still in the nascent stage of its development.
• A web search engine allows a user to carry out a search for any particular information. The search results generally presented a list of results which comprised a mix of links to different locations. The user is expected to once again make a choice to select the desired result from the list so provided.
• The present invention proposes to first extract clear and concise details of the information resource the user is looking for in a localised manner before generating a well construed query to the internet. The localised steps for such extraction are called “preliminary selection steps” which are implemented on a client machine deliberately avoiding access to the internet.
• The present invention advantageously teaches delaying a hit to the web unless necessary parameters to construe the request have been extracted from the user through the preliminary selection steps.
• In the present invention, the web site address is generated locally and passed on to a network for retrieving the required information/data and consuming the internet bandwidth only once, no bandwidth is assigned unless the user has provided sufficient information to take such user to the particular website address, therefore avoiding the unnecessary wastage of bandwidth.
• Thus, the present invention delays emitting of a “final” request to the internet thereby gaining the technical effects mentioned.
• Through the use of the present invention, the user gets the desired result without compromising on the relevancy and quality of results.
• The present invention is economical as the internet bandwidth is consumed only once per search. It is also likely to decrease network congestion resulting in increased quality of internet service to the user.

Status of corresponding foreign applications:

The Appellant had been awarded Patents for the present invention in various foreign jurisdictions, including Australia, New Zealand, South Africa, Eurasia, Canada, France, China, Hong Kong, Singapore, USA and Japan. In Europe, the application is under appeal.

Issues:

1. Whether a patent should be granted under Section 2(1)(j)[1] of the Patents Act, 1970?; and
2. Whether the patent is exempted by the operation of Section 3(k) of the Patents Act, 1970?

Objections raised to the application by the Respondent:

1. Similarity of the current invention with the prior art. The “first hierarchical multi-level menu-structure” of D1[2], which is stored in local station is similar to the locally stored “preliminary selection steps” of the instant application and feature of “final request to the internet” of the instant application can’t be said to involve any technical difference vis-a-vis D1, as it allows user to access the second menu-structure which resides on a central station.
2. Claimed invention falls under Section 3(k) according to which “mathematical or business method or a computer program per se or algorithm” is not inventions.

Appellant’s Contentions:

On the difference of the present invention to the cited prior art:

• D1 merely provides a method of selection from two options which are already available to the user in order to access to the more recent data through the second menu structure
• The present invention is directed to a method and device for accessing information resources not available to the user.
• D1 does not allow a user to search for an information resource which is not already present on either of the menu structures. The invention in D1 consumes more bandwidth resources as against the present invention as well irrespective of whether this will result in a successful selection or not.
• D1 teaches against the disclosure of the present invention, which is delaying and emitting of only a final and single well-directed request to the internet, it does not make the present invention obvious.

On hierarchical structure navigation:

The two inventions utilise the “hierarchical navigation” differently. While the present invention uses it to narrow down a request to make it well directed and constructed to access a specific resource in a single attempt/iteration, D1 uses it to navigate through data items both in local station and central station.

On technical difference from D1:

In D1 user continuously hops from local station to a central server, utilising internet at each such hop. This is the disadvantage which is avoided in the present invention by emitting a final request to the internet.

On non-patentability under Section 3(k):

• This section provides that “mathematical or business method or a computer program per se or algorithm” is not an invention.
• According to the observations of the Delhi High Court on 12.12.2020, 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 the Patents (Second Amendment) Bill, 1999 that: “this change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or develop thereon. The intention here is not to reject them for grant of the patent if they are inventions”. Therefore, these words were incorporated by the Patent (Second Amendment) Bill, 1999 to ensure that genuine inventions which are developed based on computer programs are not refused patents.
• If the invention demonstrates a “technical effect” or a “technical contribution”, it is patentable even though it may be based on a computer program.
• The present invention achieves the following “technical advantages” and exhibits the following “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

Thus, the present invention falls under at least the following indicators of “technical effect” provided in the Guidelines for Examination of Computer Related Inventions, 2013: higher speed, more economical use of memory and more efficient data base search strategy.

The present invention provides an efficient search strategy for accessing information on the web. It 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.

Observations of IPAB:

On Invention being hit by alleged prior art D1 and thus falling outside Section 2 (1) (j):

• The present invention and D1 differ in process and the effects involved. Thus, the inventions are thus entirely different. The Respondent has incorrectly identified D1 as the relevant prior art with respect to the present invention as the two have different objects and provide different solutions.
• Although, as provided by the Respondent, structuring of a query is in the realm of computer programming, the present invention generates a well-constructed query through the implementation of the preliminary selection steps which is finally emitted to the internet. Therefore, the claimed invention is not limited to “structuring of query”.
• The Respondent is mistaken in stating that the feature of “final request to internet” of the instant application cannot be said to involve any technical difference to D1. D1 does not achieve the ‘technical effect’ of the present invention. The present invention corrects the limitations of the prior art.

On non-patentability on account of section 3(k):

• The Respondent has failed to appreciate and apply the direction of the Delhi High Court contained in the Order dated 12.12.2019 through which the court provided that the invention must be examined as a whole and if it demonstrates a technical effect or a technical contribution, it is patentable even though it may be based on a computer program. The Respondent had concluded that the fact that a computer program is used for effectuating a part of the present inventions puts a bar to its patentability.
• The invention must be examined as a whole and the following factors are to be considered while deciding upon the patentability of such inventions:
  • the technical effect achieved by it; and
  • its technical contribution.
• The Respondent has incorrectly relied upon the judgement in Aerotel Ltd. v. Telco Holdings Ltd. & Ors[3]. (“Aerotel”) to conclude it as the definitive statement on the law on patentability of Computer Related Inventions in the United Kingdom.
• The test of patentability of Computer Related Inventions has been laid down in Aerotel as: (a) properly construe the claim; (b) identify the actual contribution; (c) ask whether it falls solely within the excluded subject matter; and (d) check whether the actual or alleged contribution is actually technical in nature; the same is appreciated by the Respondent.
• However, Aerotel does not define the term “technical contribution”. This is not noted by the Respondent.
• In addition to this, Aerotel is not centred on the concept of “technical contribution”.
• The definition of “technical effect” or “technical contribution” is to be taken from the Guidelines relating to Computer Related Inventions, 2013, as issued by the Office of the Controller General of Patent, Design and Trademarks, which provides the following examples to provide “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
  • Improves reception/transmission of a radio signal

The Appeal was allowed.

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[1] Section 2 (1) (j), Patents Act, 1970, In this Act, unless the context otherwise require “invention” means a new product or process involving an inventive step and capable of industrial application

[2] Prior Art

[3] [2006] EWCA Civ 1371

Summarised by: Ms. Nidhe Sushrutha, M.S. Ramaiah College of Law, Bangalore