Case Number: OA/17/2020/PT/DEL
Court: Intellectual Property Appellate Board
Decided on: 20/07/2020

Case Summery

The present case was filed before the Intellectual Property Appeal Board (IPAB) by Allani Ferid (hereinafter referred to as the ‘Appellant’) as under §117A of the Patents Act, 1970 (hereinafter referred to as the ‘Act) against the order dated 7th February, 2020 passed by the Controller of Patents (hereinafter referred to as the ‘Respondent’) as under §15 of the Act rejecting the Appellant’s Indian patent application No. IN/PCT/2002/00705/DEL (hereinafter referred to as IN’00705). The patent application IN’00705 was filed in the year 2000 at the Indian Patent Office for an invention pertaining to a “Method And Device For Accessing Information Sources And Services Of The Web”. A request for examination of the patent application IN’00705 was filed in the year 2004 subsequent to a publication of IN’00705 as under the provisions of §11(A) of the Patents Act, 1970 as amended in 2005. Upon examination, the First Examination Report (FER) raised objections that the subject matter did not constitute an inventive step as required under § 2(1)(j) of the Act, the
response to the FER was filed by the Appellants. However, the second examination report retained objections from the FER along with technical objections raised under s 3(k) of the Act , the Appellants did not respond to the former report and was therefore deemed to be abandoned under § 21(1) of the Act. Due to abandonment of the application, a writ petition was filed before the Hon’ble Delhi High Court for the opportunity of oral and written hearings. The respondents however refused the application on the basis of an order dated 18 th Nov., 2008 and thereafter an appeal was filed against the said order before the IPAB under §117A (2) of the Act, the IPAB dismissed the said appeal. Another writ petition was filed before the Hon’ble High Court of Delhi in view of the aforesaid dismissal of appeal, the court in its order concerning the writ petition directed the Indian Patent Office to re-examine the Appellant’s patent application and held that “the bar on patenting is in respect of ‘computer programmes per se….’ and not all inventions based on computer programs”.

The factual matrix of the present case before the IPAB involves the respondent refusing to grant patent to application IN’ 00705 on grounds of lack of novelty under s 3(k) of the Act among other arguments of the patent application conflicting with prior art. The bench of IPAB in the instant order has stated that in today’s digital
world every electronic or digital product has computer programs built within the product it would therefore be archaic to classify them as non-patentable inventions, the effect that such products produce is a crucial factor in determining the test of patentability. The claims of the Appellant in the appeal maintain that the said invention will solve a technical problem that will enable web users to have an efficient search strategy for accessing information and sources on the web. The claim of the Respondent that the patent application is conflicting with prior art as interpreted by the IPAB bench states that there is a stark fundamental contrast of the former claims juxtaposed to the claims of the Appellant, primarily that the claim put forth by the Respondent is related to method of selection from two options which are already available to a user while present invention of the Appellant is directed to a method (and device) for accessing information resources not available to user. The IPAB
bench made a reference to the legislative background of the addition of § 3(k) under the Act and highlighted the legislative intent of adding the words ‘per se’ in the foregoing section was to ensure that genuine/original inventions developed or based upon computer programs are not refused patents. The appellants in their claim
stressed on the technical advantages that is achieved by accentuating upon the reduced time and accessibility of information resources including the saving of network resources (i.e., bandwidth).
Further, the Appellant’s claim stated that the aforementioned technical advantages fall under the definition of ‘technical effect’ or ‘technical advancement’ as under Guidelines for Examination of Computer Related Inventions, 2013 (CRI Guidelines,2013).. The IPAB refuted the Respondent’s claim of the EU Guidelines superseding over the CRI Guidelines by maintaining that the latter provides “cogent and coherent guidance in terms of the indicators of technical effect” as it enlists indicators for the same which include (i) Higher speed (ii) More economical use of memory (iii) More efficient data base search strategy among other factors. The IPAB bench held that the claimed invention fell under the aforesaid indicators of technical effect captured in the Guidelines. The IPAB ruled in favor of the Appellant primarily on the ground that the present patent application IN’00705 had different objectives and provided different solutions in contrast to the Respondent’s claim that IN’00705 is conflicting
with prior art. Moreover, the Respondent erred in provided coherent reasoning in contesting the specifications of IN’00705.

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