In the case of Kroll Information Assurance LLC vs Controller General of Patents, Designs and Trademarks & Ors. [C.A. (COMM. IPD-PAT) 439/2022], the Delhi High Court examined two crucial issues in patent law: the permissibility of amendments under Section 59 and the scope of Section 3(k) of the Patents Act, 1970.

The appeal arose from the refusal of patent application number 8100/DELNP/2007, entitled “A System, Method and Apparatus to locate at least one type of person, via a Peer-to-Peer Network”. The impugned order disallowed the proposed claim amendments for contravening Section 59andrefused the application on the grounds of lack of inventive step and non-patentability under Section 3(k) (under the exclusion ‘algorithm’ and ‘computer programme per se’). 

The claimed invention related to a system and method for identifying specific types of people or information within a peer-to-peer (P2P) network. Using defined search terms, the system was designed to profile users or locate certain categories of data based on search results. The originally filed independent Claim 1 described the system to be comprising of a storage medium, a user input device, and a processor configured to execute a program to (i) connect to the network and (ii) issue the search.

The amended Claim 1 introduced two additional features specifying the retrieved information:

(iii) receiving a response from a responding computer associated with a particular user as a result of the search, indicating that a file matching the search is available for download; and
(iv) specifying that the response from the responding computer identifies that user as the “type of person” sought to be located.

The Controller disallowed these amendments on the ground that they went beyond the scope of the original claims. According to the impugned order, the original claim involved manual searching by a user providing input to the system, whereas the amended version introduced an automated system functioning independently, thereby expanding the invention’s scope.

The Delhi High Court, however, disagreed with this assessment. Relying on Nippon A & L Inc. vs Controller of Patents [2022 SCC OnLine Del 1909], the Court reiterated that an amendment is permissible if it: (i) acts as a disclaimer, correction, or explanation; (ii) is for the purpose of incorporation of actual facts; (iii)(a) does not introduce matter not disclosed in substance in the originally filed specification; and (iii)(b) does not broaden the claim’s scope.

The Court held that the additional features introduced through sub-clauses (iii) and (iv) were limitations and explanatory in nature. The amendment merely specified how the system retrieved and associated responses within the P2P network, thus narrowing the scope of the claim. The Court noted that these elements were supported by the complete specification and did not introduce any new subject matter. Accordingly, the amendments were found to comply fully with Section 59. The Controller’s finding of contravention was therefore set aside.

After addressing the issue of amendments, the Court turned to examine the Controller’s refusal under Section 3(k), which excludes from patentability “a mathematical or business method or a computer programme per se or algorithms”.

The Court noted that the claimed invention employed standard computing components: processor, memory, storage, and conventional software, to execute keyword-based searches across the P2P network.

Referring to the Guidelines for Examination of Computer Related Inventions (CRI), 2017, the Court clarified that patentability must be assessed based on the substance of the invention rather than its form in which it is claimed. The CRI Guidelines emphasize that the entire claim must be read as a whole to determine whether, in essence, it falls within the excluded categories or results in a technical effect or a technical advancement of the hardware.

To contextualize its analysis, the Court discussed a series of precedents shaping the jurisprudence on computer-related inventions:

• In Lava International Ltd. vs Telefonaktiebolaget LM Ericsson [2024 SCC OnLine Del 2497], the Court had held that algorithms or computer programs per se are not inherently unpatentable if they are directed toward enhancing the functionality of a system or a hardware component. Patentability should be assessed based on its practical application in solving technical problems and the technical advancements it offers. The decisive factor is whether the claimed invention produces a technical effect that improves the computer system’s functionality and effectiveness.
• In Microsoft Technology Licensing vs Controller of Patents & Designs [2024 SCC OnLine Del 3239], it was held that to overcome the limitation under Section 3(k), the patentee must demonstrate that the claimed system, when implemented, contributes directly to a specific and credible technical effect or enhancement beyond general computing processes.
• In BlackBerry Ltd. vs Controller of Patents & Designs [2024], the Delhi High Court held that if an invention merely involves a set of instructions or policies that govern the flow of data, without any substantive change of hardware, such an invention remains excluded under Section 3(k).

Applying these principles to the facts before it, the Court examined the complete specification and examples of the subject application. It found that the claimed system merely utilized conventional and generic hardware components to execute a computer programme connecting to the P2P network and issuing searches, performing standard operations.

In the Court’s view, the claimed invention simply enabled a search function within a P2P network. The search itself was based on user-defined keywords which is a conventional computer-programme behaviour. It therefore could not be said that the programme enhanced the functionality of the hardware. Further, the profiling aspect of the invention where keyword lists were used to identify specific types of users or data was held to be abstract in nature and lacking any technical character.

Consequently, the Court rejected the appellant’s submission that the claimed invention demonstrated any technical effect or technical advancement sufficient to take it beyond the exclusion of Section 3(k), upholding the decision of the Controller.