In Trans Union LLC vs The Controller General of Patents and Designs [(T)CMA(PT) No.159 of 2023], the Madras High Court examined the refusal of patent application number 4268/CHE/2012, entitled “System and Method for Matching of Database Records Based on Similarities to Search Queries”. The application was refused on the sole ground of non-patentability under Section 3(k) of the Patents Act, 1970, under the exclusions ‘algorithm’ and ‘computer programme per se’. The Appellant contested this refusal.

The invention related to a system and method for matching database records with search queries based on similarity across multiple data fields. It was specifically designed to address the inherent deficiencies of consumer data, such as inconsistent formatting, spelling variations, missing identifiers, and incomplete records. Rather than relying on exact matches, the system evaluated similarity across fields to return more accurate and reliable results from large databases.

The Controller characterised the claims as nothing more than algorithmic steps for screening and matching of database records implemented through software. On the basis that search query optimization algorithm is computer program per se, the invention was held to fall squarely within the exclusion under Section 3(k), without any further analysis of technical effect, system architecture, or improvement in computer functionality. The impugned order recorded that the objective of the invention was consumer credit risk determination and that the claims lacked structural or technical features.

The Appellant challenged the refusal on the ground that Section 3(k) had been applied mechanically, without examining whether the claimed system disclosed a technical contribution or effect. It was contended that the invention provided a technically implemented solution for screening, retaining, rejecting, and merging database records based on quantified similarity measures, resulting in functional efficiency and improved data processing, and therefore could not be treated as non-patentable under Section 3(k).

Placing reliance on its earlier decision in Ab Initio Technology LLC v. Controller of Patents & Designs [(T) CMA (PT) 58 of 2023], the Court reaffirmed that a patent application would pass through the “per se” exclusion under Section 3(k) if one or more features of the claimed invention make a technical contribution and thereby enhance the functioning of the computer or the device in which the computer programme is embedded.

Although the invention was ultimately aimed at retrieving and analysing cognitive information, namely, assessing the credit risk of consumers, an objective that is undoubtedly non-technical in isolation, the Court was careful to distinguish the purpose of the invention from the manner in which that purpose was technically achieved. The refusal under Section 3(k) stemmed from the Controller’s view that the claims merely facilitated data retrieval and analysis. However, The Court rejected this characterisation and examined the claimed system as a whole, observing that the monopoly sought was not over any algorithm, computer programme, or information retrieval as such, but over a method that employed algorithms, applications, and programmes to enable effective credit appraisal through a technical process involving normalisation, matching, assignment of matching strength, and related steps.

The Court further clarified that the subject application was materially distinct from inventions based on purely linguistic or semantic processes, such as those involving word replaceability matrices or mathematical models assessing semantic equivalence between terms. The claimed invention, by contrast, disclosed a technically implemented method comprising a series of coordinated steps executed through a processor, search engine, and matching engine. It could not be reduced to a non-technical abstraction or likened to the conventional task of a librarian being performed on a computer. The method was founded on technical considerations and could not be characterised as being solely non-technical, whether linguistic, semantic, or otherwise.

In view of the forgoing, the Court set aside the impugned order. It, however, remarked that a remand was necessary for the limited purpose of narrowing the scope of the claims by introducing greater specificity and addressing issues of enablement.