{"id":6772,"date":"2020-11-23T10:36:52","date_gmt":"2020-11-23T09:36:52","guid":{"rendered":"https:\/\/www.boehmert.de\/software-related-inventions-are-not-always-computer-programs-per-se-lessons-from-the-allani-case-by-the-indian-intellectual-property-appellate-board\/"},"modified":"2022-08-18T16:32:50","modified_gmt":"2022-08-18T14:32:50","slug":"software-related-inventions-are-not-always-computer-programs-per-se-lessons-from-the-allani-case-by-the-indian-intellectual-property-appellate-board","status":"publish","type":"post","link":"https:\/\/www.boehmert.de\/en\/software-related-inventions-are-not-always-computer-programs-per-se-lessons-from-the-allani-case-by-the-indian-intellectual-property-appellate-board\/","title":{"rendered":"Software related inven­tions are not always \u201ccomputer programs per se\u201d: Lessons from the Allani case by the Indian Intellectual Property Appellate Board"},"content":{"rendered":"

The Allani case sheds lights on an appropriate approach for examining Computer Related Inventions (CRIs) in India. Particularly, the courts addressed questions on the significant hurdles faced by CRIs in view of what would constitute \u201ctechnical effect\u201d and \u201ctechnical advancement\u201d referring to examination guidelines.<\/span><\/p>\n

Patentability of Computer Related Inventions (CRIs) have always been a subject of international attention. The provision that deals with patentability of CRIs in India is Section 3(k) of the Patents Act, 1970 (\u201cthe act\u201d). Section 3(k) was introduced in the act in 2002 to principally bar the patentability of \u201ca mathematical or business method or a computer programme per se or algorithms\u201d<\/em>. The act however does not define the terms \u2018software\u2019 or \u2018computer programmes per se<\/em>\u2019. In the same year, a French inventor, Ferrid Allani filed a national phase application in India titled \u201cMethod and device for accessing information sources and services of the web\u201d which was accorded patent application number IN\/PCT\/2002\/00705\/DEL.\u00a0 The application consisted of both method and device claims and was based on the PCT application PCT\/FR2000\/003759, which in turn claimed priority from the French patent application numbered 99\/16704.<\/p>\n

During prosecution before the Indian Patent Office (IPO), the device claims were objected to as lacking novelty and inventive step, while the method claims were objected for being directed to a computer programme per se<\/em> under Section 3(k). However, as was the case then, there was no clear understanding on what would constitute a \u201ccomputer program per se<\/em>\u201d or an \u201calgorithm\u201d for software related inventions \u2013 as there were no guidelines issued for examination of CRIs by the IPO at that time. This is perhaps what led to the fall and rise of Allani\u2019s invention before the Indian legal system.<\/p>\n

The application was rejected by the IPO and the subsequent appeal was also dismissed by the IPAB, stating that the patent application failed to disclose any technical effect or technical advancement. The applicant then filed a writ petition before the Delhi High court challenging this decision of the IPAB. By the time the matter was brought up for hearing before the court,\u00a0 the IPO had already issued a set of draft guidelines for Examination of Computer Related Inventions. While advancing his arguments before the court, the applicant made reference to the guidelines and pointed out all the paragraphs of the patent specification which disclosed technical effect and technical advancement, in accordance with the CRI guidelines. It was held that CRIs should be examined in accordance with judicial pronouncements on Section 3(k) and the Guidelines issued with respect to the same. Some important observations made by the court on patenting of CRIs are as follows:<\/p>\n