Appellant, Kroll Information Assurance, LLC (Kroll) filed a patent application for an invention related to a system, method and apparatus to identify sensitive or protected information and /or identifying users inadvertently sharing such information on a peer-to-peer network through profiling based on user-provided search terms. The Controller of Patents (Controller) rejected the application on the grounds of non-compliance of proposed claim amendments under Section 59, lack of inventive step under Section 2(1) (ja) and non-patentable under Section 3(k) of the Indian Patents Act, 1970.

Kroll argued that the Controller had erred in rejecting the proposed amendments under Section 59 of the Patents Act as the amended features only narrowed down the scope of original claims.  Kroll further clarified that these limitations (narrowing the scope) were already disclosed and supported by the complete specification.

Kroll responded to the lack of inventive step objection, arguing that the cited prior art failed to disclose the inventive feature of the claims. Moreover, the Controller failed to provide suitable reasoning of how the subject invention is obvious to a person skilled in the art (PSITA) with available general domain knowledge. Kroll argued that the Controller overlooked the invention’s technical contribution and technical advancement, despite its recognition and patent grant in other major jurisdictions like USA, Canada, Australia and Japan.

The Court first analyzed the proposed amendments under Section 59 and relying on Nippon A & L v Controller of Patents, concluded that the limitations merely narrowed the scope of the claims without deviating from what was disclosed in the complete specification. Moreover, the Court supplemented that these limitations are clarificatory in nature and explain how specific information or individuals are located. Accordingly, the Court concluded that the rejection on this ground was erroneous.

Next, the Court addressed the Controller’s objection under Section 3(k) of the Patents Act that the subject application was related to an ‘algorithm’ and a ‘computer programme per se’. The Court referred to Section 4.5 of the Guidelines for Examination of Computer Related Inventions, 2017 (CRI Guidelines). These Guidelines guide the Controller to assess if the claimed subject matter falls under the exclusion of Section 3(k) by examining if the invention results in a technical effect or a technical advancement of the hardware.

The Court further relied on LAVA International Ltd. v Telefonaktiebolaget LM Ericsson concerning the scope of patentability of ‘algorithm’ and ‘computer programme per se’ under Section 3(k) which confirmed that inventions involving algorithms or computer programs per se may be patentable if their implementation transforms the capabilities of hardware, leading to tangible benefits.  

The Court further relied on Microsoft Technology Licensing v Controller of Patents & Designs and Blackberry v Controller of Patents & Designs to conclude that algorithm or computer programme are patentable if they result in significant technical effect or advancement of the hardware, rather than being a mere sequence of instructions executed by a computer.

Applying the above principles to the subject case, the Court held that the subject application uses generic and conventional computer hardware to connect to the peer-to-peer network and perform searches based on a sequence of instructions provided by the user. This process profiles and finds relevant information and users associated with the same, thus reflecting a typical ‘computer programme’ behaviour and lacks any significant transformation of computer hardware’s functionality.

Furthermore, the Court opined that the profiling feature of the subject application is abstract in nature and lacks any technical character, as it merely uses specific keywords to perform relevant searches. The Court, thus, concluded that the Controller had rightly refused the subject application under Section 3(k) and upheld the refusal order.

This judgment reiterates that for a CRI invention to be patentable, it must solve a technical problem in a real-world scenario or offer a technical advancement to the hardware functionality, resulting in a technical effect. The specification must clearly support and enable the claims accordingly.