J U D G M E N T

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 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 conciseness qua scope of claimed invention under Section 10(4)(c) of the Act. 3. After the hearing, Microsoft submitted written arguments, but the Controller remained convinced and issued the order dated 11th April, 2019 [“impugned order”] rejecting Microsoft’s application under Section 15 of Act, finding the claimed invention to be non-patentable under Section 3(k) of the Act as well as having other unmet requirements under the Act.

1 Title of the invention.

CONTENTIONS OF THE PARTIES

4. Ms. Vindhya S. Mani, counsel for Microsoft argues that the impugned order is liable to be set-aside as it has incorrectly interpreted Section 3(k) of the Act and besides, it does not provide sufficient reasoning for arriving at the erroneous conclusion. Her submissions are summarized hereinbelow:

4.1. The impugned order is non-speaking and unreasoned and thus, violative of the principles of natural justice.

4.2. Section 3(k) of the Act has been wrongly interpreted in the impugned order insofar as it concludes that Claims 1-28 relate to an algorithm implemented by computer program per se. The intent of the legislature to add the words “per se” does not mean that patents to a computer program shall not be granted altogether, rather the intent was to reject grant of patent protection to computer programs as such.

4.3. Technical contribution/ effect in the subject patent lies in the improved security of the existing computer and computer networks and hence, the same ought to be granted a patent. Patent Office has disregarded the decisions of this Court in Ferid Allani v. Union of India and Ors.,2 and Telefonaktiebolaget LM Ericsson (PUBL) v. Intex Technologies (India) Ltd.3

4.4. The claims submitted before the Patent Office, as a whole, relate to a technical process, solves a technical problem, and provides a technical solution/ advancement relating to security of the data accessed on a network. The contribution of the claimed invention does not lie solely in the excluded subject matter but rather in the combination of the software with the hardware components.

2 2019 SCC OnLine Del 11867. 3 2015 SCC OnLine Del 8229.

4.5. Reliance is placed on the decision of the UK Chancery Division (Patents Court) in AT &T Knowledge Ventures, LP’s Patent Application,4 UK Court of Appeals in HTC Europe Co. Ltd. v. Apple Inc.,5 and Aerotel Ltd. v.

Telco Holdings Ltd.6

5. Mr. Harish Vaidyanathan Shankar, CGSC for Respondent, on the other hand, opposes the petition and states that the Respondent has passed a reasoned order and rightly rejected the subject patent. His submissions were supported by Mr. Santosh Kumar Gupta, Controller, who had appeared pursuant to order dated 24th April, 2023. Submission of Mr. Vaidyanathan Shankar are as follows: -

5.1. Patent rights are territorial in nature, grant or refusal thereof will have t