By Jigyasa Pareek

In a recent decision of the Madras High Court in AB Initio Technology LLC vs Controller of Patents & Designs [(T)CMA(PT) No.58 of 2023], the Court took a scalpel to the long-standing imprecision surrounding Section 3(k) of the Patents Act, 1970, which excludes from patentability “a mathematical or business method or a computer programme per se or algorithms”.

For years, Indian Courts, as well as Courts in the UK and Europe, have recognised that a computer software may be patent-eligible if it revels a “technical contribution”, “technical character”, “technical consideration”, “technical effect”, “further technical effect”, “technical means”, “technical nature”, “technical advancement” and the like. However, the interchangeable use of these expressions has led to considerable confusion.

The Court noted in its judgement that, in many situations, there is considerable, if not complete, overlap between these terms, and substituting one for another may make little practical difference. The Court emphasised the need to anchor the meaning of “technical” in a clear, coherent way. To that end, it referred to two definitions from the Cambridge Dictionary:

“ relating to practical skills and methods that are used in a particular activity”

“ relating to the knowledge and methods of a particular subject or job”.

After surveying the approaches adopted by the UK and European Courts, the Madras High Court observed that the expression “technical” is consistently used in the sense of practical methods and skills used in the physical and natural sciences. Thus, for example, a method of estimating similarity that relies solely on non-technical considerations, such as cognitive content of the items to be retrieved, purely linguistic rules or other subjective criteria, is regarded as non-technical.

The Court clarified that expressions like “technical contribution” and “technical effect” must be understood in this narrower sense of having practical application in science and industry, rather than of relating to knowledge or methodology of any discipline. Based on this, the Court delineated the often-confused expressions as follows:

• ‘Technical contribution’ focuses on whether one or more features of the claimed invention add technically to the field;
• ‘Technical effect’ refers to the technical impact or outcome produced; and
• ‘Technical character’ or ‘technical nature’ pertains to the intrinsic qualities of the feature.

Building on this clarified understanding of the expression “technical”, the Court held that “a computer-related invention (CRI), even de hors novel hardware or impact on the internal working, would not be excluded under Section 3(k) if such CRI makes a technical contribution or has a technical effect”. In arriving at this position, the Court departed from the UK law approach, which requires a demonstrable impact either outside the computer system or on the computer’s architecture or internal hardware processes.

The Court opined that Indian approach substantially aligns with the EPO Board’s jurisprudence, which draws a distinction between computer programs and computer-implemented methods. As the EPO Guidelines explain, a “computer program” refers to a sequence of computer-executable instructions specifying a method whereas a “computer-implemented method” refers to a method actually performed on a computer, involving technical considerations relating to data structures, functional flows, resource utilisation, or system behaviour. The Court observed that this distinction provides a jurisprudential justification for treating software-implemented inventions as technical. This distinction is neither recognised nor regarded as material in UK law, which is one reason the UK test produces a narrower spectrum of allowable CRIs.

At the same time, the Court cautioned that this theoretical distinction is not the sole basis for Indian law. Rather, any CRI that makes a technical contribution or exhibits a technical effect does so on the computer or device in which the software is embedded, which itself demonstrates that such an invention is more than a mere computer program. In other words, Indian law avoids both extremes: it does not presume that every computer-implemented invention is technical, nor does it impose the UK’s exacting requirement of a transformative impact on the internal working of the computer or outside the computer system.

The Court further observed that while adopting the UK approach might offer administrative convenience to the Patent Office, such convenience would come at the cost of excluding entire classes of software-based inventions that deliver technical value. It would also represent an unwarranted departure from the approach of Indian Courts, which have consistently taken a more balanced view, and from the principles embodied in the CRI Guidelines. The Court acknowledged that the Indian position demands a more nuanced case-by-case assessment of whether a claimed contribution is truly technical. Even so, this approach preserves doctrinal coherence and maintains conceptual fidelity.

Having clarified the correct approach to Section 3(k), the Court proceeded to analyse the subject patent application number 4693/CHENP/2010, entitled “Graphic Representations of Data Relationship” which was refused by the Controller on the grounds of lack of novelty and inventive step, and patent ineligibility under Section 3(k) (under the exclusions ‘algorithm’ and ‘computer programme per se’).

The invention disclosed a method and system for generating a data lineage diagram that maps the relationships between data items stored in databases. It allows a user to initiate a data item lineage search either on upstream or downstream basis and to depict the relationship of data items diagrammatically. The System consists of a metadata management system; a storage system containing multiple configuration information sets with each configuration information set including different selection specifications; and a diagram generator. When a user selects a data item on the interface, the diagram generator receives the request and identifies, from the configuration file storage, a configuration file consisting of one or more selection specification corresponding to the request. Based on this, an ad-hoc query is sent to the data management system to retrieve related sets of data items, and a lineage diagram is then generated representing programs and data as nodes and the metadata-defined relationships as edges.

In the impugned order, the Controller characterised the application as disclosing merely the manner in which data items are organised and retrieved, without any technical feature relating to data usage and data retrieval. The Controller rejected the claims primarily on the basis that: the claimed invention was a “computer algorithms” since the claims represented a set of computer-executable instructions; customised or novel hardware was not deployed; the method steps were implemented with the aid of computer programmes driven by algorithms; and the proposed algorithmic change had no technical motivation.

The Court posited that the claimed invention involved a technical considerations of reduction of query response time by eliminating the need for laborious, step-by-step manual tracing of data lineage and enabling users to pose multiple ad-hoc queries relating to data lineage or type of data relationship simultaneously. The Court noted that these improvements in the system’s internal functioning were achieved by technical features viz the diagram generator, the metadata management system, and the configuration file storage.

The Court further explained that while the invention used algorithms and computer programmes, the use produced a technical effect. The method enabled reduction of query response time; simultaneous handling of multiple lineage-related ad-hoc queries; automated identification of associated selection configurations; initiation of selection actions to determine related items across iterations; and feeding of these results into a generator that produced complete lineage diagrams through a looping process. The Court remarked that these functionalities collectively gave the invention technical character.

In view of these findings, the Court concluded that the invention did not fall under Section 3(k). It also held that the invention satisfied the requirements of novelty and inventive step. Accordingly, the impugned order was set aside and the application was directed to proceed to grant.