On November 12, 2024, the Madras High Court delivered its decision in the case Idemia Identity & Security France vs The Controller General of Patents [(T) CMA (PT) No.198 of 2023], remanding the patent application for re-consideration after quashing the impugned order passed by the Controller.

The Appellant, Idemia, had filed an appeal, challenging the rejection of their patent application number 538/CHENP/2012. The patent application related to a method for applying cryptographic calculations using elliptical curves, which the Appellant claimed as a unique technical contribution in the field of cryptography. The subject application was refused by the Controller on the ground that the claimed invention was a mathematical method and a business method which fell under Section 3(k) of the Patents Act, 1970, and therefore was not patentable.

The Appellant argued that a key aspect of the invention was to address a security issue in applying a cryptographic calculation to a message. Conventionally, probabilistic insertion algorithms are used in facilitating the application of a cryptographic calculation. The security issue was that if an attacker determined the application times of these algorithms, the attacker could obtain information about an encoded message. The Appellant highlighted that the claimed invention addressed this vulnerability by masking the time used by the probabilistic insertion algorithm, and as such involved a technical contribution. According to the Appellant, the steps of the claimed invention also exhibited a technical effect, in the form of “improv[ement] in [a] calculation performance, while not allowing any attack linked to the execution time of the cryptographic calculation.” As such, the claimed invention “prevent[ed] hacking of [a] coded message transmission.”

In support of the appeal, the Appellant referred to both the European and Indian guidelines for the examination of patent applications, highlighting that inventions involving technical contributions, such as cryptographic methods, are patentable even if they involve mathematical formulas. The Appellant pointed out that the refusal of the application had been based on an incomplete and non-speaking order, which failed to consider the substantive technical contributions of the invention. It was also argued that there was no reference to business method in the hearing notice, yet the application was refused under the said exclusion.

The Controller, on the other hand, argued that the invention fell within the scope of Section 3(k) of the Patents Act, because it adopted a mathematical method and a business method, and thus, was not patentable. In response to this, the Appellant drew the Court’s attention to the Computer-Related Inventions (CRI) Guidelines, and more specifically to Clause 4.5.1, and submitted that the claimed invention specified a practical application, despite adopting a mathematical method.

The Court observed that the Controller had failed to properly consider the Appellant’s submissions regarding technical contribution of the claimed invention and had passed a non-speaking order. The Court remarked that the Controller ought to have considered the submissions made by the Appellant and assigned a reason for their rejection. The Court concurred with the Appellant, noting that while Section 3(k) excludes certain types of inventions from patentability, exceptions apply for inventions involving technical contributions.

The Court further emphasized that the claimed invention involved a practical application of a mathematical method for improving cryptographic systems, which is distinct from merely applying an abstract mathematical formula. This was further buttressed by the fact that both the European guidelines and CRI guidelines explicitly state that inventions related to encrypting/decrypting electronic communications involves a technical contribution and is not excluded under 3(k), respectively. Accordingly, the Appellant’s claims fell within the exceptions to Section 3(k) of the Patents Act, as they demonstrated a technical effect, particularly in masking execution times for improved security in cryptographic processes.

The Court also noted that the Appellant had not been given an opportunity to respond to the objection related to the business method exclusion under Section 3(k), as it had not been raised in the hearing notice.

Given that the impugned order (i) did not address the substantive contentions of the Appellant, including the technical aspects of the invention, and (ii) that the hearing notice failed to reference the business method objection the Court ruled that the order was arbitrary and violated the principles of natural justice.

In light of these observations, the Court quashed the impugned order and remanded the matter to the patent office for a fresh and thorough reconsideration.