INDIA Trends and Developments Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
ious input system/method is able to allow the processor to give a more efficient and faster out- put and computation, the effect, in this Court’s opinion, would be ‘technical’. A ‘technical effect’ cannot be just about nuts and bolts, or hardware tweaks and transformations. If an innovative input [in the form of a program] allows the hard- ware to process the output faster, then it would amount to a ‘technical effect’. In other words, a well-designed innovative input in the form of a process, system or method which enhances the computational ability of the processor would undoubtedly result in a ‘technical effect’ and [go] beyond the usual ‘user interface’.” These judgments of the Delhi High Court thus illustrate the test for patentability of computer programs as being how and/or to what extent a computer program transforms or enhances technological functionality of the invention, instead of merely focusing on whether an inven- tion includes a computer program. The interpre- tation of the “computer program per se” exclu- sion in Section 3(k) has evolved from a simple statutory prohibition into a complex, multifac- eted analysis. The Madras High Court also contributed signifi- cantly to this discourse in Idemia Identity and Security France v The Controller General of Pat- ents, Designs and Trade Marks, (T) CMA (PT) No 198 of 2023 and in Mitsubishi Electric Corpora- tion v The Assistant Controller of Patents and Designs, (T) CMA (PT) No 11 of 2023, where it remanded applications (which had been reject- ed as being non-patentable under Section 3(k)) back to the Controller of Patents. However, in certain cases, such as Blackberry Limited v The Assistant Controller of Patents and Designs, 2024:DHC:6571, the Court acknowl- edged that a “technical effect” was being pro-
duced but was rooted in the algorithms and nothing else, and thus was not patentable. Therefore, the extent and scope of the “tech- nical effect” required for patentability requires determination on a case-by-case basis. These judgments signify a shift in Indian jurispru- dence and signal the possibility of granting pat- ents even to software programs. The reason for this trend is perhaps the creation of dedicated Intellectual Property Divisions (IPDs) in the Delhi High Court and Madras High Court, which are able to expeditiously adjudicate on the Control- ler of Patents’ appeals. This, in turn, has cast significant responsibility on the Patent Office to give reasoned, detailed orders when rejecting or granting patents. Given the advent of generative artificial intelli- gence (gen-AI), these developments have sig- nificant strategic implications and open up the Indian market for companies globally to patent computer-related inventions previously consid- ered unpatentable. For international companies with research and development centres in India, this evolution presents strategic opportunities for patent portfolio development, and allows for greater protection of patent rights. However, several critical challenges remain unresolved. The absence of clear parameters for assessing “technical effect” creates uncer- tainty as to the extent of the effect needed on the actual device. This, in turn, paves the way for a flooding of patent applications, in which the scope of “technical effect” would not necessarily be delineated. Consequently, the Controller of Patents would have to either allow any applica- tion demonstrating even the smallest “technical effect” or define the level of effect that the inven- tion must have.
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