2023:DHC:3342

C.A.(COMM.IPD-PAT) 29/2022 Page 1 of 31

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IN THE HIGH COURT OF DELHI AT NEW DELHI

Reserved on: 28^th April, 2023

Date of Decision: 15^th May, 2023

+

C.A.(COMM.IPD-PAT) 29/2022

MICROSOFT TECHNOLOGY LICENSING, LLC ..... Appellant

Through:

Ms. Vindhya S. Mani, Mr. Gursimran

Singh Narula and Ms. Vaishali Joshi,

Advocates.

versus

THE ASSISTANT CONTROLLER OF

PATENTS AND DESIGNS

..... Respondent

Through:

Mr. Harish Vaidyanathan Shankar,

Central Government Standing Counsel

with Mr. Srish Kumar Mishra, Mr.

Sagar Mehlawat and Mr. Alexander

Mathai Paikaday, Advocates with Mr.

Santosh Kumar Gupta and Ms.

Shraddha Turkar, Controllers at the

Indian Patent Office.

Mr.

Rajiv

Choudhary,

Advocate

Amicus Curiae.

CORAM:

HON'BLE MR. JUSTICE SANJEEV NARULA

J U D G M E N T

SANJEEV NARULA, J.:

THE CONTROVERSY

1. This appeal is focused on the controversy surrounding the

Digitally Signed

By:SAPNA SETHI

Signing Date:15.05.2023

13:10:41

Signature Not Verified

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C.A.(COMM.IPD-PAT) 29/2022 Page 2 of 31

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 07^th November, 2003 for

registration of an invention relating to “METHODS AND SYSTEMS FOR

LOCATION”[interchangeably “claimed invention” or “subject patent”].¹ The

Patent Office issued First Examination Report [“FER”] on 27^th 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 20^th 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 11^th 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.

Digitally Signed

By:SAPNA SETHI

Signing Date:15.05.2023

13:10:41

Signature Not Verified

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C.A.(COMM.IPD-PAT) 29/2022 Page 3 of 31

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 toa 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 pa