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SANJEEV NARULA
Microsoft Technology Licensing, Llc – Appellant
Versus
Assistant Controller of Patents And Designs – Respondent
JUDGMENT
Sanjeev Narula, J.
THE CONTROVERSY
1. This appeal is focused on the controversy surrounding the interpretation of the phrase "computer program per se" in the exclusionary Section 3(k) of the Patent Act, 1970 ["the Act"].
THE FACTS
2. Microsoft Technology Licensing, LLC ["Microsoft"] filed an Indian Patent Application No. 1373/DEL/2003 on 07th November, 2003 for registration of an invention relating to "METHODS AND SYSTEMS FOR AUTHENTICATION OF A USER FOR SUB-LOCATIONS OF A NETWORK LOCATION" [interchangeably "claimed invention" or "subject patent"].1[Title of the invention] The Patent Office issued First Examination Report ["FER"] on 27th April, 2016, raising objections relating to: (a) lack of novelty in view of certain cited prior arts, (b) lack of inventive steps in view of cited prior arts, and (c) non- patentable under Section 3(k) of the Act (computer program per se). It was followed by Hearing Notice dated 20th February, 2019, which raised substantive objections on: (a) lack of novelty and inventive step in view of other cited prior arts, (b) non-patentability under Section 3(k) of the Act (algorithm and computer program per se), and (c) lack of clarity and concisen
The central legal point established in the judgment is the need to consider the revised CRI 2017 Guidelines, the technical contribution and effect of the invention, and the lack of mandatory novel ha....
The court established that a computer-related invention can be patentable if it demonstrates a technical effect that enhances system functionality, overcoming the exclusion of computer programs per s....
The main legal point established in the judgment is that a divisional patent application must be distinct from the parent application, and the reasons for rejection of a patent application should be ....
The main legal point established in the judgment is the requirement for thorough consideration of amended claims and legal submissions, particularly in relation to Section 3(k) of the Patents Act, an....
The main legal point established in the judgment is that a claimed invention primarily involving conducting business or organizing commercial transactions, rather than providing a technical solution ....
The novelty of a patent must be established by clear prior art disclosures, with emphasis on systematic analysis distinguishing novelty from non-obviousness.
The court has the authority to allow a change of name under Section 151 of the CPC.
The court emphasized the necessity for a detailed analysis on inventive steps in patent applications, ruling that mere conclusions without discourse on prior art are insufficient for rejecting patent....
The Controller must consider the differences between prior art and the claimed invention, provide a reasoned order, and adhere to the principles of audi alteram partem.
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