This post discusses the order dated 30th August 2024, in Blackberry Limited vs. Assistant Controller of Patents and Designs, wherein the Delhi High Court decided an appeal filed by Blackberry against the refusal of its patent application under Section 3(k) of the Patents Act, 1970. The Court held that the core invention of Blackberry’s patent application was an algorithmic process governed by conditional logic and procedural steps, regardless of its technical contribution, thereby falling under the exclusion criteria of Section 3(k).
Facts
Blackberry Limited (“Blackberry”) filed a patent application titled “Administration of Wireless Systems” before the Indian patent office, bearing number 1762/DEL/2008, on 25th July 2008. The application was refused by the patent office under Section 3(k) on 25th September 2019, on the grounds that the patent application was directed towards sets of instructions and software, which were purely functional and lacked any inventive hardware features.
Blackberry’s Arguments
Blackberry argued that the invention solved a technical problem and provided a technical solution. Relying on key judgments, including Dolby International AB vs The Assistant Controller of Patents and Designs (2023:DHC:1854), Ferid Allani v. Union of India (2019 SCC OnLine Del 11867), HTC Europe Co. Ltd. v. Apple Inc. ([2013] EWCA Civ 451), and the European Patent Office’s decision in T 208/94 (Vicom Systems Inc.), Blackberry contended that:
- The Controller’s refusal order was unreasoned and amounted to a non-speaking order;
- The invention provided a technical effect by enabling mobile wireless clients to identify unresolvable conflicts between multiple servers and resolve them in favor of one wireless server, ensuring continued operation in case of conflict;
- The presence of a computer program did not negate the technical effect of the invention as a whole; and
- There was a clear distinction between a technical process and a mere mathematical process or algorithm.
Analysis
The Court reiterated the aspect of claim construction as discussed in Guala Closures SPA v. AGI Greenpac Limited (2024:DHC:3715) and Terrell on the Law of Patents, Eighteenth Edition. The Court then proceeded to analyze the refusal order and reiterated the revised CRI guidelines, stating that “Computer Related Inventions (CRIs) cannot be tested on the fulcrum of the requirement of inventive hardware, as the same is a higher standard which lacks any basis in law.”
The Court evaluated the patentability of Blackberry’s patent application based on two issues:
- Whether the technical contribution of the subject patent is merely a set or sequence of instructions.
- Whether the substance of the subject patent is directed towards algorithmic processes.
To assess the first issue, the Court analyzed the claims in conjunction with the Complete Specification, focusing on “whether the claimed invention goes beyond a series of instructions or if it primarily constitutes a set of if-then-else iterations that do not meet the criteria for patent protection under Section 3(k) of the Act.” The Court observed that the core functionality of the patent relied on conditional logic and procedural steps. In line with the judgment in Lava International v. TLM Ericsson, the Court asserted that the objection under Section 3(k) raised by the Controller was justified, as the technical contribution was limited to a complex sequence of instructions.
To assess the second issue, the Court examined the term “per se” and clarified that algorithms and sequences of instructions are not patentable under Indian law, which differs from jurisdictions like the US and EU, where such protections may be granted. The Court further explained that, while the term “per se” qualifies computer programs, Indian law excludes algorithms from patent eligibility. Reiterating relevant portions from Lava International Ltd. (supra), the Court noted that if a patent application demonstrated a further technical effect through the incorporation of algorithms within a system, it could qualify for patent protection. However, with respect to Blackberry’s patent application, the Court opined that the subject patent comprised a set of algorithmic instructions aimed at managing and regulating the flow of various types of informational content. The only technical effect of such instructions would be that the data is regulated to determine transmission either in favor of secondary servers or primary servers, thereby falling under the purview of a purely algorithmic process.
Moreover, the Court noted that the Vicom Inc. judgment, as relied upon by Blackberry, was not applicable to the current case, as the qualifier of “as such” to mathematical methods, applied by the EU Board of Appeal, was not relevant in India.
Conclusion and Decision
The Court concluded that the objection raised by the Controller under Section 3(k) of the Act was both appropriate and justified, as the technical contribution of the patent was essentially an implementation of algorithmic logic, evidenced by the use of terms like “policy agent,” “communication policy,” and “interoperating instructions.” Further, the Court opined that the operations described, such as detecting configuration data, evaluating policies, and resolving conflicts, were guided solely by a series of algorithmic instructions, falling short of warranting patent protection under the Act. The Court, therefore, dismissed the appeal.
Citation: Blackberry Limited vs. Assistant Controller of Patents and Designs (C.A. (COMM.IPD-PAT) 229/2022)
Authored by Dr. Sowmya Murthy, Patents Team, BananaIP Counsels
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
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