In an era marked by rapid technological advancement, inventions are emerging at an unprecedented pace. Patents serve a critical role in this dynamic landscape by protecting the rights of inventors and ensuring that they receive fair return on their intellectual, financial and temporal investments. However, the scope of what can be patented is not limitless. Section 3 of the Patents Act, 1970, stipulates what are not considered inventions under the law and are therefore not patentable in India.

The Madras High Court, in its judgement in Microsoft Technology Licensing LLC vs Assistant Controller of Patents [(T) CMA (PT) No.49 of 2023, 2024:MHC:2537, judgement dated July 3, 2024] delved into the nuances of Section 3(k) of the Patents Act which excludes from patentability “a mathematical or business method or a computer programme per se or algorithms”. The Court addressed in detail the scope of the four exclusions outlined in Section 3(k):

• Mathematical Method: The Court defined it as a specific approach, typically involving a series of steps, to resolve a mathematical problem or question. This exclusion, the Court emphasised, is intended to prevent the patenting of mere expression of an intellectual exercise, such as methods of calculation or the formulation of equations. However, the mere presence of a mathematical formula in a claim does not necessarily classify it as a mathematical method.

• Business Method: The Court described it as a specific approach to conduct a business enterprise or a segment of it, such as multi-level marketing or direct marketing. The Court clarified that when a Computer-related invention (CRI) is used in a business method, it does not fall under the business method exclusion; rather, its patent eligibility is evaluated against the exclusions for computer programs per se or algorithms.

• Computer Programme per se: The Court was of the view that the definition of computer program provided in Section 2 (ffc) of the Copyright Act, 1957, is applicable in the context of the Patents Act also. Section 2 (ffc) of the Copyright Act defines a computer program as a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result.

The Court further explored the legislative intent behind the qualifier ‘per se’ and concluded that:

• Inventions that are more than computer programs¾something ancillary to or developed on a computer programme, having an impact on the functioning of the computer/hardware¾are not intended to be excluded from patent protection;
• Software related patent applications should not be evaluated solely against the criteria of technical application to industry or combination with hardware;

The Court clarified that the qualifier ‘per se’ ensures that genuine computer programs-based inventions:

• demonstrating a technical effect that improves the computer system’s functionality and effectiveness; or
• demonstrating technical contribution; or
• demonstrating technical advancement; or
• providing a technical solution to a technical problem,

not limited in its impact to a particular application or data set, are not excluded from patent protection. 

The Court also referred to few European and UK case laws for signposts for identifying ‘technical effect’ and remarked that the signposts provide guidance and should not be applied rigidly. The signposts include:

• whether the claimed technical effect has a technical effect on a process carried on outside the computer;
• whether the effect is produced regardless of the data being processed or the applications in use;
• whether the claimed technical effect results in the computer to operate in a new way;
• whether there is an increase in the speed or reliability of the computer;
• whether the perceived problem is overcome by the claimed invention rather than merely being circumvented.

• Algorithms: The Court defined algorithm as a set of rules or instructions for solving a problem, typically through a sequence of steps or operations.

While interpreting Section 3(k) of the Patents Act, which prohibits from patentability“a mathematical or business method or a computer programme per se or algorithms”, theCourt also noted that the first two exclusions pertain to methods and form a common sub-set. Another sub-set within Section 3(k) is “a computer programme per se or algorithms” and the qualifier “per se” is appended only to computer programme. 

In the instant appeal, Microsoft challenged the refusal of their patent application number 5584/CHENP/2010, entitled “Associating Command Surfaces with Multiple Active Components”, on the ground, inter alia, of patent ineligibility under Section 3(k) of the Patents Act. The claimed invention disclosed a system and method for associating a command surface with multiple active components on a single page, including the components associated with different applications, to facilitate simultaneous processing of different unrelated applications. The impugned order stated that the claimed invention operated at the application layer and the technical effect claimed by the applicant did not extend beyond the computer program. Therefore, because the claimed invention did not have any hardware limitation, it was deemed non-patentable under Section 3(k). The order also indicated that the application did not provide details on enablement of the claimed invention i.e. exactly how the commands would be associated/ disassociated with a particular component, and, therefore, the subject matter of the claims fell within the scope of Section 3(k).

Microsoft asserted that the Controller incorrectly applied the 2016 CRI Guidelines, which demanded ‘novel hardware’ features for patentability, while the revised 2017 guidelines dispensed with the novel hardware requirement and provided for examining the claimed invention in substance. Further, they argued that their invention provided a technical effect and it significantly enhanced system functionality by integrating commands from multiple unrelated applications using the same command surface. Microsoft also contented that the Controller erroneously invoked enablement and sufficiency requirement as grounds for rejection under Section 3(k).

The Court determined that the claimed invention was patent eligible under Section 3(k) as it provided the requisite ‘technical contribution’ and possessed ‘technical effects’¾eliminated the need for multiple command surfaces, reduced the use of memory space in the system and augmented efficacy. The Court also held that ‘enablement’ is not a relevant consideration under Section 3(k) and, therefore, is not a valid ground for refusal under the said provision.

In conclusion, the appeal was allowed and the application was directed to proceed to grant.