Allani Ferid v. Assistant Controller of Patents and Designs

Citation: OA/17/2020/PT/DEL

Before: The Intellectual Property Appeal Board (IPAB)

Bench: Hon’ble Justice Manmohan Singh (Chairman of the IPAB), Hon’ble Dr. Onkar Nath Singh (Technical Member)

Facts:

On 17th July 2002, Allani Ferid (“Allani”) filed a Patent Application at the Indian Patent Office for a “method and device for accessing information sources and services of the web” (Appln No. IN/PCT/2002/705/DEL). The invention aimed to provide easy, quick and direct access to required sources and services on the internet without wasting precious network resources.

Upon first examining the said application in 2004, it was objected on the ground that the invention lacked an inventive step as per Section 2(1)(j) of the Patents Act, 1970 related to the prior art D1.

Another examination report was issued in 2005, which not only included the aforesaid objection but also added technical objections as per Section 3(k) of the Patents Act. Since there was no response to this examination report, the application was deemed to have been abandoned.

On 2nd May 2006, the Appellant filed a writ petition in the Delhi High Court challenging the abandonment. The Court directed the Indian Patent Office to re-examine the Patent Application and allow an oral or written hearing. Accordingly, a hearing was held in August 2008, and yet again, the Application was refused. Although an appeal was filed in the IPAB against the refusal, the same was dismissed.

This led to the Appellant filing another writ petition in the Delhi High Court against the dismissal in 2013. As per its order dated 12th December 2019, the Court asked the Indian Patent Office to re-examine the Application. It opined that patenting is not allowed for “computer programmes per se….” and not all inventions based on computer programs.

In view of the same, the Patent Office scheduled another hearing on 7th January 2020. As per the Order dated 7th February 2020, the Application was refused, this time on an additional ground that the claimed invention lacks novelty as per Section 3(k). Aggrieved by this, the Appellant challenged the refusal in front of the IPAB. Since the Patent Application was about to expire on 29th December 2020, the appeal was heard on an urgent basis.

Issue: Whether Allani’s invention can avail patent protection as per the provisions of the Patents Act, 1970.

Laws Involved: Sec 2(1)(j) of the Patents Act, 1970

Sec 3(k) of the Patents Act, 1970

Analysis:

The Patent Office objected that Allani’s invention clashed with a prior art D1. It was of the view that the first hierarchical multi-level menu-structure of D1 is similar to the locally stored “preliminary selection steps” of Allani’s application. However, Allani contended that while D1 was related to the method of selection from two options that are already available to a user, his invention was directed to a method for accessing information resources that were not available to the user. Looking into these contentions, the IPAB stated that the Patent Of fice incorrectly identified the relevant prior art with respect to the invention, as both these inventions have different objectives and provide different solutions.

It was of the view that the Patent Office failed to apply the Delhi High Court’s order in the writ petition filed in 2019. Since the Court clearly stated that 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 aforesaid order further went on to highlight the legislative intent of adding the term ‘per se’ in Section 3(k). As computer programs may include certain other things, ancillary thereto or developed thereon, patents for these inventions must not be rejected.

The IPAB further stressed that the invention must be considered as a whole. While looking into the aspect of patentability of the invention, the factors regarding the technical effect achieved by it, as well as its technical contribution must be considered.

Allani’s invention had the ability to solve a technical problem, which was a critical addition to the functionality of the internet back in 1999. The invention in question had a significant technical contribution to the state of the art and possesses a critical technical effect. Thus, it was concluded that the patent must be granted. The Appeal was allowed and the Order dated 7th February 2020 was to be set aside.

Conclusion:

The long-drawn battle for Allani Ferid’s patent application led to what can be said to be a noteworthy decision of the IPAB. By deciding in favour of granting the patent, the Order highlighted the importance of looking beyond the fact that a computer programme has been used for an invention. In a way, this decision helped redefine the Indian patent landscape.