Use Of Algorithms And Computer Programmes With Technical Contribution Patentable: Madras High Court Rules

Section 3(k) of the Patents Act, 1970, remains the most disputed matter being taken up by the Courts in India. In the recent case of AB Initio Technology LLC. Trans Union vs Controller Of Patents [(T)CMA(PT) No.58 of 2023], the Madras High Court overturned the refusal of the patent application No. 4693/CHENP/2010 of AB Initio Technology for the invention "Graphic Representations of Data Relationship" by the Patent Office. The respondent Controller's impugned order dated July 13, 2020, rejected the application for lack of novelty and inventive step under Section 2(1)(j) and non-patentability under Section 3(k) of the Patents Act, after which AB initio filed an appeal.

Applicant's Case on Section 3(k)

The appellant submitted that the respondent Controller failed to construe the claims properly, and the impugned order is bereft of any reasoning as to how the claimed invention falls under 'algorithm' and 'computer programme per se'. They further submitted that the respondent incorrectly concluded that Section 3(k) was applicable by citing the lack of a novel and specific hardware feature and added that the correct standard to test a claimed invention under Section 3(k) is to analyse whether it demonstrates a 'technical effect' or 'technical contribution'.

Respondent's Reply

The respondent Controller submitted that the claimed invention related to method claims, which helped a user find answers to data relationship queries across distributed sources and was therefore non-technical in nature. It generated data lineage diagrams aided by processors, and the mere execution of method steps on a computer programme for presentation of data relationship diagrams was liable to be construed as a 'computer programme per se'.

Appellant's Rebuttal on Section 3(k)

The appellant, in rebuttal, argued that the subject invention provided a technical solution to the technical problem of keeping track of data items, including transformations thereto, both upstream and downstream, by providing a graphical representation of data lineage, thereby surmounting the barrier of Section 3(k).

Appellant's Argument Against Rejection under Section 2(1)(j)

The appellant argued that the claimed invention was distinguishable from the cited prior art D1 in that it provided a window into the evolution of the data, i.e., data lineage, whereas D1 provided a method for retrieving relationships between data entities but did not provide for data lineage tracing. Further, all features of the claimed invention, especially those pertaining to the data lineage diagram, were not present in D1, and the respondent controller wrongly conflated 'querying the metadata management system' and 'displaying a unified view'. Hence, the claimed invention satisfied the requirements of novelty under Section 2(1)(j).

Respondent's Reply

The respondent Controller submitted that the claimed invention's object of presenting data lineage relationships by allowing the user to pose a query, retrieve configuration information sets pertaining to related metadata, and provide a graphical representation of the data lineage relationship was anticipated and made obvious by the disclosures in D1.

Appellant's Rebuttal

The appellant argued that the subject invention provided a technical solution to the technical problem of keeping track of data items, including transformations thereto, both upstream and downstream, by providing a graphical representation of data lineage, thereby surmounting the barrier of Section 3(k) of the Patents Act, 1970. Learned counsel further stated that the respondent's objection under Section 2(1)(j) in respect of lack of novelty is untenable as D1 fails to disclose all the features of the claimed invention, especially those pertaining to the data lineage diagram, and that the respondent has wrongly conflated 'querying the metadata management system' and 'displaying a unified view'.

The appellant argued that D1 operates on a repository of data hierarchies and each data hierarchy comprising data regarding plurality of entities and relationships between the entities but does not disclose the method of presenting a data lineage relationship diagram among data and programme by retrieving an information configuration set and querying the metadata management system using one or more selection specifications from the first configuration information set to identify related metadata items making it inventive over the prior art.

Court's Analysis and Findings

The Court looked into the complete specification and claims and noted that "... the claimed invention uses algorithms and computer programmes, but such use results in the technical contribution and effect of reducing query response time, allowing users to pose multiple ad-hoc queries at a time to generate data lineage diagrams by allowing the user to select a data item, determine the associated selection configuration file, initiate a selection action that identifies related data items of different iterations, feed the query results to the diagram generator, and follow a looping process that generates further related data items." The Court found that these contribute to the technical character of the claimed invention, resulting in a data relationship diagram representing data lineage consisting of a graph and input and output fields.

The Court noted that the perusal of impugned order reveals that the respondent controller rejected the subject application for the following reasons: that the claimed invention relates to "computer algorithms" as the claims represent a set of computer-executable instructions; customised or novel hardware is not deployed in the claimed invention; the method steps are implemented with the aid of computer programmes driven by algorithms; and the proposed algorithmic change has no technical motivation.

According to the respondent Controller, all the method steps were done with the help of computer programs in terms of an algorithm and performed on a computing device/ system, as claimed in claim 26. He rejected the patent, citing that the proposed algorithmic change lacks technical motivation and that its implementation is trivial as an algorithm. Hence, the subject matter of claims 1-26 relates to "computer algorithm" and falls within the scope of Section 3(k) of The Patents Act, 1970 (as amended).

Court's Analysis of the Reason for Refusal under Section 2(1)(ja)

The Court looked into the position of law under Section 2(1)(ja) which define inventive step to mean involving technical advance as compared to the existing knowledge having economic significance and noted that the use of the disjunctive 'or' before 'having economic significance', in scheme of Section 2(1)(ja) language makes is evident that 'technical advance over existing knowledge' is not an essential pre-requisite and that economic significance may be established instead subject, however, to the overarching requirement of the feature of the invention not being obvious to a PSITA." According to the Court, this means that the use of the phrase 'technical advance over existing knowledge' in Section 2(1)(ja) underscores the necessity of testing the existence of a technical advance with reference to the knowledge existing on the priority date. Consequently, there is a need for examination of prior art.

What Constitutes Technical Advance/Ingenuity

The Court compared the claimed invention with D1 to look for ingenuity and found that:

"D1 is not designed or programmed to trace and retrieve every upstream or downstream data item in the data set and, for instance, identify the modified data item or the problematic data item in the data set. As discussed earlier, the focal point of D1 is entity and in capturing the relationship between entities, whereas the focus of the claimed invention is tracking upstream and downstream data lineage and thereby identifying data items in data sets. Indeed, in view of the problem that D1 set out to resolve visa-vis the problem that the claimed invention sets out to resolve, notwithstanding that both deal with data management, in my view, PSITA armed with D1, and even common general knowledge would not be able to arrive at the claimed invention absent ingenuity." [Emphasis added]

In view of the above, the Court ruled that the claimed invention satisfies the novelty and inventive step requirements under Section 2(1)(j). As a corollary, the impugned order could not be sustained and was set aside.

Court's Interpretation of Section 3(k)

The Court then examined Indian law on the interpretation of Section 3(k), particularly in the context of computer programmes and algorithms. In this context, the Court observed that it is profitable to examine the interpretation placed on corresponding provisions in the European Patent Convention, 1973 and the UK Patents Act, 1977. The Court concluded that, under Indian law, patent applications relating to a CRI, even de hors novel hardware or its impact on the internal workings thereof, would not be excluded under Section 3(k) if such CRI makes a technical contribution or has a technical effect.

Technical Contribution or Technical Effect

The theoretical distinction incorporated in the EPO Guidelines between a computer programme and the implementation thereof on a computer is worth recalling inasmuch as it provides a jurisprudential, albeit technical (note that I use the word in a different sense here), justification for such interpretation. Such a theoretical distinction is, however, not the sole plank because any CRI that makes a technical contribution or has a technical effect has such an effect on the computer or the device in which the software is embedded, thereby justifying the conclusion that it is more than a computer programme.

According to the Court, "Indian law, thus, does not adopt either the extreme position that every computer-related or computer-implemented invention makes a technical contribution or the exacting standard adopted by the UK Courts requiring a direct and transformative impact on the internal working of the computer or outside the computer system. In Microsoft MHC, I had conflated one of the AT&T, signposts, as correctly critiqued in Ramanujan's Patent Law. On revisiting the subject, I find that the Indian approach is substantially in line with the EPO Board's jurisprudence but not with that of Courts in the UK. "

The Court acknowledged that this "may entails a tricky case-by-case analysis of whether there is a technical as opposed to non-technical contribution and even so, it is a price worth paying to strike an appropriate balance. As the survey of UK law shows, the requirement of determining whether the claimed invention makes a technical contribution is, in any case, not obviated under the UK approach."

The Court applied these principles to arrive at a rational decision on whether there is a technical contribution or technical effect in the claimed invention by examining the complete specification on the working of the claimed invention and found that "... the claimed invention uses algorithms and computer programmes, but such use results in the technical contribution and effect of reducing query response time, allowing users to pose multiple ad-hoc queries at a time to generate data lineage diagrams by allowing the user to select a data item, determine the associated selection configuration file, initiate a selection action that identifies related data items of different iterations, feed the query results to the diagram generator, and follow a looping process that generates further related data items. These contribute to the technical character of the claimed invention resulting in a data relationship diagram representing data lineage consisting of graph and input and output field."

In view of the above, the Court ruled that the claimed invention is not excluded from patentability under Section 3(k) of the Patents Act.

Court's Decision

The Court allowed the appeal [(T)CMA(PT) No.58 of 2023] and directed that the Patent Application [4693/CHENP/2010] shall proceed to grant on the basis of the last submitted claims.

Precedence Value

This landmark decision would go a long way toward guiding the patent office in examining the 'technical advance/ingenuity' requirements as enshrined in Section 2(1)(ja) when dealing with computer-related inventions. According to the Court, if 'PSITA armed with citation (D1 in this case) and even common general knowledge would not be able to arrive at the claimed invention absent ingenuity, the claimed invention satisfies the novelty and inventive step requirements Section 2(i)(ja). According to the Court, inventions using algorithms and computer programmes which result in technical contributions are not hit by the reach of Section 3(k). In this case, the Court favoured granting a patent, as the claimed invention involved technical considerations, namely the reduction of query response time by eliminating the need for a tedious, time-consuming step-by-step manual process. This means that the technical contributions are key to obtaining CRI patents using algorithms and computer programmes, even in India under Section 3(k).

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