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Delhi High Court’s Progressive Rulings Favor Microsoft in Software Case
In a recent decision by the Delhi High Court, in the case of Microsoft Technology Licensing, LLC v Assistant Controller of Patents and Designs, the Court reaffirmed that the Guidelines for Examination of Computer Related Inventions (CRI), 2017 (CRI Guidelines 2017), which eliminated the novel hardware requirement, must be applied to determine the patentability of software-related inventions.
Overturning the refusal decision of the Assistant Controller of Patents and Designs (Controller), the Court directed the grant of Microsoft Technology Licensing, LLC‘s (Microsoft) subject patent application (application).
The case revolved around Microsoft Technology Licensing, LLC’s (Microsoft) application for a novel reversible 2D overlap operator to improve the encoding process while maintaining compression quality. This application was rejected by the Controller in 2019.
Microsoft in its appeal finally before the Court, argued that their invention was not a mere computer program but a technical solution to a specific problem. They further contended that the refusal was based on the outdated Guidelines for Examination of Computer-Related Inventions (CRI), 2016 (CRI Guidelines 2016), which required novel hardware to overcome the exclusion of patentability under Section 3(k) of the Patents Act. However, the CRI Guidelines 2017 removed this requirement.
The Controller argued that the invention was solely performed by means of a computer program in C language and being software-based, it squarely falls under the non-patentable category of “computer programs per se” of Section 3(k) of the Patents Act, 1970.
The Court, however, referenced a recent judgement in an SEP dispute, Lava International Ltd. v Telefonaktiebolaget LM Ericsson, to emphasize that an invention incorporating computer programs or algorithms can be considered patentable if it significantly enhances hardware functionality and demonstrates a tangible technical effect or advancement. It must also meet other criteria such as novelty, inventive step, and industrial application.
Additionally, the Court referred to the recent cases of Microsoft Technology Licensing, LLC v The Assistant Controller of Patents and Designs, and Raytheon Company v Controller General of Patents and Designs, to reiterate the inapplicability of the 2016 CRI Guidelines for assessing patentability, and the removal of the novel hardware requirement.
In light of these precedents, the Court observed that the invention has real-world applications and significantly enhances the functionality of the hardware components by enabling efficient and reversible digital media data compression. This directly contributes to reduced storage requirements during processing and hence improves system performance and efficiency of the hardware. Thus, the Court concluded that the application in question did not fall under the exclusions of Section 3(k) and met the criteria for patentability and directed the Controller to grant the application.
The judgement yet again underscores the importance of recognizing technical contributions and practical applications of software inventions, rather than dismissing innovations based solely on their software components. This decision exemplifies the Indian courts’ commitment to ensuring that innovative software-led products and solutions are supported and protected, to foster an environment of technological advancement.
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Delhi High Court Backs Microsoft for Clarity & Global Standards in Patent Cases
In Microsoft Technology Licensing LLC v The Assistant Controller of Patents & Designs, The Patent Office, the Delhi High Court highlighted the necessity for procedural fairness and clarity in the patent examination process to align with principles of natural justice and international patent standards.
Appellant, Microsoft Technology Licensing LLC (Microsoft) filed a patent application for an invention related to a method of securing communications through operations of a computer system that encompasses plurality of host devices interconnected by a network, organized into enclaves. The Assistant Controller of Patents & Designs (Controller) rejected the application on the grounds of non-compliance with Section 10(4) and Section 2(1)(j) of the Indian Patents Act, 1970 which deal with the sufficiency of the invention’s disclosure and the lack of inventive step, respectively.
Microsoft argued that the objection regarding sufficiency of disclosure under Section 10(4) was not maintainable due to lack of proper reasoning in the First Examination Report (FER) and complete absence from the Hearing Notice. Furthermore, they highlighted procedural irregularities in the citation of prior art documents, which were not mentioned in the Hearing Notice and the FER. Microsoft also pointed out that the corresponding application in Europe had been granted by the European Patent Office (EPO) where the prior art documents cited by the Controller were not considered obstacles to patentability. Lastly, Microsoft argued that the cited prior art documents did not disclose their invention, and the Controller had failed to provide sufficient reasoning to support his finding. All these aspects were cited as violations of the principles of natural justice.
The Court concurred that the deficiencies in the complete specification identified by the Controller, must be articulated with clarity and should be conveyed properly to an applicant. The Court further highlighted the importance of Section 10(4) and observed that the Controller’s conclusion that a specific claim of the invention fails to meet the standards of Section 10(4) of the Act, without a detailed exposition of the non-compliance, is not legally tenable.
The Court also noted that there are procedural irregularities in the refusal order which it deemed to “undermine the fairness and integrity of the examination process, being violative of principles of natural justice.” The Court clarified the importance of ensuring that an applicant is provided with a fair chance to address any deficiencies identified in their application, and/or to present arguments countering the objections raised.
The Court recognized that the Indian Patent Office (IPO) is required to examine patent applications independently, without being bound by decisions made in corresponding foreign patent applications. However, if the objections and citations align with those considered in foreign jurisdictions in such applications, then the resolution of these objections and the granting of a patent should be considered as a precedent with persuasive value while deciding patentability of an Indian application.
Based on these observations, the Court overturned the Controller’s decision and remanded the matter for fresh consideration. The Court instructed the Controller to issue a hearing notice, clearly delineating any objections and render a decision within four months from the date of the hearing.
This judgment highlights the importance of procedural fairness and adherence to the principles of natural justice while examining patent applications. It re-emphasizes the need for clear and specific articulation of objections, ensuring that applicants have a fair opportunity to address such concerns. Lastly, the judgement recognizes the relevance of decisions provided by foreign jurisdictions in patent applications while assessing the inventiveness and patentability of an invention.
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Google penalized by Delhi High Court for misrepresenting disclosures
In a notable judgment in early April, the IP Division of Delhi High Court dismissed Google LLC’s (Google) appeal against the rejection of its patent application by the Assistant Controller of Patents and Designs (Controller), and imposed a fine of Rs 1 lakh (~USD 1,200) on the tech giant for presenting incorrect information and failing to disclose critical details about its corresponding applications in Europe.
In 2007, Google filed a patent application before the Indian Patent Office (IPO) for its technology that enables users to manage seamless instant messaging across different smart devices like desktops and PDAs, irrespective of the device. The application was rejected by the Controller based on lack of novelty and inventive step in view of prior art.
Aggrieved by the impugned order, Google appealed before the erstwhile Intellectual Property Appellate Board (IPAB). After the dissolution of IPAB in 2021, the case was transferred to the Delhi High Court where it was eventually heard in December 2023. During the proceedings involving detailed arguments on novelty and inventive step by both sides, the Court inquired about the status of the corresponding patent applications in other countries. Google responded by stating that the US and Canadian patent applications were granted, while the European patent (EP) application was abandoned. The IPO’s Counsel refuted this by pointing out that the EP application had in fact been rejected on the basis of lack of novelty and inventive step and not abandoned. Court also found that a divisional application with the identical title as that of the rejected EP application had also been filed and its status was also disclosed as “abandoned”, when in fact it was also rejected on the same grounds.
Taking serious note of Google’s conduct in the proceedings, the Court noted that Google had misrepresented facts to the IPO as well as the Court which also breached its duty of disclosure under the Patents Act, 1970 (Act).
The Court finally dismissed the appeal on merits for not meeting the novelty and inventive step requirement. Additionally, the Court ordered Google to pay costs of INR 1 Lakh (~USD 1,200) for presenting wrong facts to the Court and not meeting the disclosure requirements under the Act.
This judgment re-emphasizes the necessity for applicants to provide complete and accurate information throughout the application process, especially concerning information related to corresponding foreign patent applications, which may be material to the grant.
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IPO ends decade-long pre-grant opposition to Gilead’s Sofosbuvir prodrug
In a landmark case, Gilead Pharmasset, LLC v Sankalp Rehabilitation Trust and Ors., the Indian Patent Office (IPO) in Kolkata granted a patent to Gilead Pharmasset, LLC (Gilead), covering the prodrug molecule of anti-HCV drug Sofosbuvir. The IPO rejected all the 13 pre-grant oppositions, filed by various opponents including pharma companies, advocacy groups, and individuals against the patent application. The case spanned a decade.
The patent application was opposed primarily on the grounds of lack of novelty, lack of inventive step, non-patentability under section 3(d), and insufficiency of disclosure and failure to disclose information under section 8 of the Indian Patent Act, 1970. Since these multiple oppositions were filed at varying intervals, the grant proceedings were substantially delayed.
After considering all the materials on record, the Controller of Patents (Controller), held as follows: made the following key findings:
- Validity of priority date of the application: The Opponents challenged the priority application dated March 30, 2007, based on the patent application US 60/309,915 and argued that submitted documents D23 and D24 should be considered valid prior art for assessing the novelty of the claims. However, the IPO found these arguments unpersuasive, noting that the priority document was valid and adequately disclosed the claimed compound’s components and stereochemical configurations.
- Lack of Novelty: The IPO concluded that the claimed compounds were novel due to their structural differences and lack of explicit disclosures in the cited documents, strengthening the novelty of the claimed compound and its process of preparation.
- Lack of inventive step: The IPO acknowledged the uniqueness of the claimed compound comprising specific moieties and substituents, which were not obvious compared to the cited prior art. The IPO also rejected the opponents’ arguments suggesting the compound was obvious in view of prior art disclosing HIV or cancer treatments, emphasizing that applying these teachings to HCV treatments without considering structural and stereochemical aspects would be implausible.
- Non-patentability under section 3(d): The IPO rejected the argument that the claimed invention was a mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of the substance. It held that the opponents’ reliance on prior art failed to establish the existence of any known substance with similar structure and efficacy to the claimed compound, or that the claimed invention lacked novelty and efficacy.
- Sufficiency of disclosure: The IPO found that the invention’s description in the application extensively covers the structure, stereochemistry, and preparation methods of the claimed compounds. Furthermore, examples and procedures outlined in the description provide adequate guidance and the claimed compound’s process, enabling skilled practitioners to understand and implement them effectively.
K&S Partners’ team comprising Litigation Practice Chair, Sanjeev Kumar Tiwari, Practice Lead (Life Sciences, Chemistry & Pharma, Amrish Tiwari and Partner and Chem-Pharma Patent Expert, Dr Jyoti Choithani Ramani, successfully represented Gilead Pharmasset, LLC in this important case.
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Patentability of Synergistic Combinations Yielding New and Improved Results
In a notable ruling in the case, Biomoneta Research Pvt ltd. v Controller General of Patents Designs, the Delhi High Court (Court) resolved an appeal by Biomoneta Research Pvt. Ltd. (Biomoenta) against the Controller General of Patents and Designs’ (Controller) rejection of their 2017 patent application for an ‘Air Decontamination Assembly.’
The case is significant for its detailed analysis of inventive step in patent law and the Court’s consideration of European patent guidelines.
Biomoneta contended the rejection of its patent application, which was previously followed by a PCT Application and subsequent national phase applications in the US Patent and Trademark Office and European Patent Office (EPO). The Indian Patent Office (IPO) had objected to the application, citing a lack of inventive step under Section 2(1)(ja) of the Indian Patents Act, 1970, (the Act) and referenced three prior art documents (D1 to D3).
In its defense, Biomoneta emphasized the uniqueness of its air decontamination technology, which utilized a low voltage electric field and conducting plates with 3D material, arguing its effectiveness against viruses like COVID-19 and features like filter-less operation and reduced power consumption.
The Court first referred to the judgement in F. Hoffmann-La Roche Ltd. v Cipla Ltd, for the “test to be followed for determining inventive step and lack of obviousness,” and Documents D1-D3. The Court noted that Biomoneta’s invention shared some features with existing technologies, such as the use of conducting plates and electric fields. However, Biomoneta’s unique combination of these elements with low voltage electric fields and 3D material-coated plates demonstrated an inventive step. This combination led to advancements like filter-free operation, reduced power consumption, and effective pathogen elimination, setting it apart from prior art and justifying the patent grant.
Further, the Court referenced the EPO guideline on combining features versus mere juxtaposition in patent claims; these guidelines emphasized that an invention should be assessed as a whole and not merely upon the combinations. Further, if the combination of features yields a new and improved result, it merits patentability. The Court found that Biomoneta’s device, addressing several disadvantages of existing technologies, wasn’t just a simple combination of known features but involved an inventive step. The Court also stated that while secondary considerations alone don’t make an invention patentable, combining existing results in a novel, beneficial way can justify a patent grant.
The Court’s decision was further influenced by the grant of a corresponding US patent, viewing it as corroborative of the invention’s novelty and inventiveness. As a result, the Court overturned the previous rejection, directing the patent application to proceed for grant.
This decision stands out for its detailed examination of inventive step, considering both Indian and European patent law principles. It emphasizes the importance of a holistic and comprehensive approach in patent adjudication, especially in complex technological fields, setting a valuable precedent for future patent assessments.