Mr Gopinath (Host): Welcome to the K&S Podcast Series. My name is Gopinath, your host. This week, we have with us Ms. Devi, Partner with K&S Partners, one of India’s leading intellectual property law firms. Good morning, Ms. Devi. Thank you for joining us.

MS Devi: Good morning, Gopinath. Thank you for having me. It is a pleasure to be here.

Mr Gopinath: Today, we are discussing an important recent decision of the Delhi High Court on the patentability of algorithms and computer-related inventions. The case is Kroll Information Assurance, LLC versus The Controller General of Patents, Designs, and Trademarks and others. Ms. Devi, to begin with, could you briefly explain what this case was about?

MS Devi: Certainly. The case concerned a patent application filed by Kroll Information Assurance. The invention related to a system, method, and apparatus for identifying sensitive or protected information on a peer-to-peer network. Broadly, the system used user-provided search terms to identify information and users who may be inadvertently sharing such protected information.

Mr Gopinath: So, at first glance, this sounds like a technology-driven invention. Why did the Patent Office reject the application?

MS Devi: The Controller rejected the application on three main grounds. First, the Controller found that the proposed claim amendments did not comply with Section 59 of the Patents Act. Second, the Controller objected to the application for lack of inventive step under Section 2(1)(ja). Third, and most importantly for this discussion, the Controller held that the invention was not patentable under Section 3(k), which excludes mathematical methods, business methods, algorithms, and computer programs per se from patentability.

Mr Gopinath: That brings us to the central issue. Section 3(k) has been discussed quite often in the context of software patents and computer-related inventions. What exactly was the Court examining here?

MS Devi: The Court examined whether the claimed invention was merely an algorithm or computer program implemented on conventional computer hardware, or whether it produced a technical effect or technical advancement. Under Indian patent law, a computer-related invention is not automatically excluded merely because it involves software. However, it must show something more than a routine sequence of instructions executed by a generic computer.

Mr Gopinath: That is an important distinction. So, software is not always excluded, but it must demonstrate a technical contribution?

MS Devi: Exactly. The Court referred to the Computer Related Inventions Guidelines, 2017. These guidelines require the Controller to assess whether the claimed subject matter produces a technical effect or involves technical advancement. The key question is whether the invention solves a technical problem in a technical way, or whether it merely automates an abstract idea using a computer.

Mr Gopinath: And in this case, what did Kroll argue before the Court?

MS Devi: Kroll argued that the Controller had wrongly rejected the claim amendments under Section 59. According to Kroll, the amendments only narrowed the scope of the claims and were already supported by the complete specification. Kroll also argued that the Controller had not properly explained how the invention lacked inventive step. On Section 3(k), Kroll submitted that the invention had technical contribution and technical advancement, and that similar patents had been granted in jurisdictions such as the United States, Canada, Australia, and Japan.

Mr Gopinath: Did the Court accept any of those arguments?

MS Devi: The Court accepted Kroll’s argument on Section 59. It held that the proposed amendments were clarificatory and merely narrowed the scope of the claims. The Court found that the amendments did not introduce new matter beyond what was already disclosed in the complete specification. Therefore, the rejection on that ground was considered erroneous.

Mr Gopinath: But the Court still upheld the refusal of the patent. Why?

MS Devi: Yes, because the Court agreed with the Controller on Section 3(k). The Court found that the claimed invention used generic and conventional computer hardware to connect to a peer-to-peer network and perform searches based on instructions provided by a user. The profiling feature was also considered abstract because it relied on keywords to locate relevant information or users. In the Court’s view, this did not transform the functionality of the hardware or produce a significant technical effect.

Mr Gopinath: That sounds like the Court was drawing a line between using a computer and improving the computer itself.

MS Devi: That is a good way to put it. The Court relied on earlier decisions, including Lava, Microsoft, and Blackberry, to clarify that algorithms or computer programs may be patentable if they result in a technical effect or advancement. For example, if implementation of the software improves the functioning of the hardware, enhances system performance, improves security at a technical level, reduces processing load, or produces another tangible technical benefit, the case for patentability becomes stronger.

Mr Gopinath: But if the invention only uses a standard computer to carry out instructions, then it may fall under Section 3(k)?

MS Devi: Correct. Merely implementing an abstract process on a computer is not enough. The invention must go beyond normal computer functionality. In this case, the Court held that the system behaved like a typical computer program. It searched, profiled, and identified information based on user-provided terms. That was not enough to show technical character or technical advancement.

Mr Gopinath: From a practical standpoint, what does this judgment mean for technology companies, especially those working with software, artificial intelligence, data analytics, cybersecurity, or platform-based technologies?

MS Devi: The judgment is a reminder that patent drafting for computer-related inventions must be very carefully handled. Applicants should not describe the invention only as a set of steps, rules, or instructions. The specification must clearly identify the technical problem, explain the technical solution, and demonstrate the technical effect. It should also explain how the claimed invention improves hardware functionality, system performance, data processing, network operation, security, or another technical aspect.

Mr Gopinath: Would it be fair to say that the claim language and the specification both matter?

MS Devi: Absolutely. The claims must be supported by the specification, and the specification must provide enough technical detail. It is not sufficient to make broad statements that the invention is technical. The application should explain what changes technically, how the system operates differently, and what measurable or tangible technical benefit is produced.

Mr Gopinath: Many companies may also assume that if a patent has been granted in the US, Europe, Japan, or elsewhere, it should be allowed in India. What does this decision tell us about that?

MS Devi: Foreign grants can be useful references, but they are not decisive in India. Indian patentability requirements must be independently satisfied. Section 3(k) has to be addressed under Indian law, and the applicant must show technical effect or technical advancement in a manner acceptable to the Indian Patent Office and Indian courts.

Mr Gopinath: That is a very useful point. Before we close, what would be your key takeaway from this decision?

MS Devi: The key takeaway is that computer-related inventions are not barred from patent protection in India merely because they involve software. However, algorithms and computer programs that lack technical effect remain non-patentable. Applicants must show that the invention solves a technical problem and produces a technical result. The more clearly this is brought out in the specification and claims, the stronger the application will be.

Mr Gopinath: Thank you, Ms. Devi. That was a clear and practical explanation of a very important decision. This judgment seems especially relevant as more businesses develop software-led products, AI systems, cybersecurity tools, and data-driven platforms.

MS Devi: Thank you, Gopinath. Yes, it is certainly an important decision for innovators and patent applicants in the technology space.

Mr Gopinath: And to our listeners, thank you for joining us on the K&S Podcast Series. This discussion is intended for general informational purposes only and should not be treated as legal advice. For specific queries, please consult a qualified professional. We will be back soon with another discussion on developments in intellectual property law. Thank you for listening.