The Delhi High Court has recently rejected a BlackBerry Limited (hereinafter “Appellant”) appeal against the Assistant Controller of Patent’s refusal of its patent application in the field of wireless communication titled “Administration of Wireless Systems[1]”. The application was for an invention that manages wireless systems by configuring wireless client devices using both primary and secondary wireless servers. The ld. Assistant Controller of Patents and Designs rejected the application on the ground of non-patentability under Section 3(k) [2], stating that the subject patent application was directed towards set of instructions and which were purely functional and lacking any inventive hardware features.
The Appellant disagreed with the reasons and challenged the refusal order in an appeal, arguing that the subject patent application was regarding administering wireless systems by configuring wireless client devices using both primary and secondary wireless servers. The purpose of the invention was to provide a technical solution to the technical problem of conflicts arising between multiple wireless servers, ensuring proper operation of the device. Effectively, the subject patent related to prioritising one server over another and resolving conflicts between the instructions in different servers. The Appellant contended that this process determined if the secondary server’s configuration data could override the primary server’s configuration upon the identification of unresolvable conflicts, ensuring one server’s configuration has priority. They also contended that in the event of conflicts, the subject patent gave mobile wireless clients the ability to (a) identify unresolvable conflicts between multiple servers and (b) resolve the identified conflicts by prioritising one wireless server over others to ensure the operation of the mobile wireless client. According to the Appellant, this capability demonstrates a technical effect and practical application, thereby not liable to attract the objection under Section 3(k) of the Act.
In the context of the appeal, the Court assessed the claims, the nature, the scope, and the substance of the invention by assessing the complete specification of the subject patent application, which presents a framework for the administration of wireless systems, focusing on secure data management, conflict resolution, and efficient synchronisation between multiple servers and mobile devices. The Court found that the claimed technical invention only systemised the flow of information between wireless systems and servers. Noting that the core functionality was heavily reliant on a series of logical instructions for managing data dissemination and privacy settings, the Court emphasised that the patent application essentially described a structured approach to managing operations within wireless systems, based fundamentally on algorithmic processes.
Analysing the two independent claims relating to (i) system and (ii) method for the administration of wireless systems – the Court held that the method and the system both related to the same general idea of managing and configuring mobile wireless clients by using primary and secondary wireless servers in a wireless system administrations.
While analysing these claims, the Court also referred to the impugned order of the ld. Controller, relying on the Ferid Allani Vs Union of India & Ors., 2019 SCC OnLine Del, and Raytheon Company v. Controller General of Patents and Designs, 2023, cases. In these cases, the Courts had clarified that computer-related inventions (“CRIs”) could not be tested on the basis of inventive hardware requirement, as it was a higher standard and lacked any basis in law. The patent office needed to examine if the invention made a technical contribution or generated a technical effect as claimed. In reference to this, the question the Court considered in the present appeal was whether the claimed invention goes beyond a series of instructions or if it is primarily constituting a set of if-then-else iterations that do not meet the criteria for patent protection under Section 3(k) of the Act.
On analysis, the Court found the use of expressions, phrases, and words such as “configured as a set of interoperative instructions”, and “configured to control dissemination of information from the least one secondary database to the at least one of the plurality of mobile wireless clients on a shared basis responsive to a determination of a privacy state of information” in the specification. According to the Court, these clearly indicated that despite being technical in nature, the subject patent’s core functionality relied heavily on a series of logical instructions to manage data dissemination and privacy settings and reflected the instructional nature of the technical contribution. The “invention” sought to resolve such conflicts through predefined conditions and actions, the same being driven by conditional logic and procedural steps. The claimed subject matter was considered characteristic of an “algorithm”, which used the “if-then-else” coding and logic statements. This configuration ensured that the server policy agent (“SPA”) operated dynamically and adaptively in response to varying communication policies, thereby optimising the control and regulation of information flow among mobile wireless clients. These processes were merely a sequence of user interactions and automated server responses, which could be implemented as a set of instructions. According to the Court, these clearly outline a sequence of instructions executed based on conditional logic and, consequently, subject matter. This means it does not qualify for patent protection and, hence, does not amount to any technical effect.
The Court, while analysing the aspects of “technical contribution”, referred to the Microsoft Technology Licensing, LLC v. Assistant Controller of Patents and Designs, 2024, case. Here, the Court had overturned the refusal of a patent application because the invention had transformed the capabilities of a general-purpose computer and made it more effective for data compression, which it was otherwise not capable of. The Court established that to circumvent the limitation of Section 3(k), a patentee must demonstrate that the invention’s overall method and system, upon its implementation, must directly contribute to a specific and a credible technical effect or enhancement that goes beyond general computer functioning. Therefore, the inventive contribution of a patent should not only improve the functionality of the system but also achieve an innovative technical advantage that was clearly defined and distinct from ordinary operations expected of such systems.
The Court further referred to the Lava International v. TLM Ericsson, 2023, case, where it had clarified that the inventions merely integrating elements within a system or method that enhances the functionality of a system or hardware component and meeting all patentability criteria for could be considered patentable. This understanding emphasises the necessity of demonstrating a further technical effect through the incorporation of algorithms within a system to qualify for patent protection. However, mere algorithms, set of instructions, and mathematical or business methods would not be patentable.
Accordingly, the Court held that while evidently the subject patent application made a technical contribution, the contribution primarily arose from the use of an algorithmic process regulating the flow of information through a sequence of instructions and there was no further technical effect upon implementation of this algorithm. The Claims, when read in conjunction with the Complete Specification, clearly indicate that the core functionality of the invention was heavily reliant on conditional logic and procedural steps. As established, such algorithmic processes fall under the exclusion criteria outlined in Section 3(k) of the Indian Patents Act, which disqualifies mathematical methods, business methods, and computer programs, per se, from being patentable subject matter. Hence, the Court dismissed the appeal, and the patent application stands refused.
[1] 1762/DEL/2008
[2] Section 3(k), Indian Patents Act –- a mathematical or business method or a computer programme per se or algorithms
