JUDGMENT

The appellant herein, having been refused to have its Computer Related Invention [CRI] patented by the Patent Office under Sec.3(k) of the Patents Act, 1970, has approached this Court with this appeal. The appellant's invention is titled 'Delegating Instant Messaging Sessions'. In its application, the appellant has made as many as 20 claims. In the operative portion of the impugned order of the respondent, it is stated that "these programs do not have further technical effect going beyond the "normal" interactions between the program and the general purpose hardware".

2.1 Heard both sides. The learned counsel for the appellant submitted that as per Sec.3(k), any invention which has 'a mathematical or business method or a computer programme per se or algorithms' are not the inventions capable of being patented. The learned counsel submitted that the Patent Office has initially brought its guidelines for examination of computer related inventions, wherein it required not only novelty in the software, but also in the hardware for a software to be patented. This was later revised by the Patent Office in its Revised Guidelines for Examination of Computer Related Inventions, 2017, in which it had dropped the need for a novel hardware as a requirement to patent a software. In other words, as per the revised guidelines, a software itself can be patented on its own strength, if it has a technical effect or a technical contribution. In the instant case, the respondent indeed has referred to the revised guidelines of 2017, yet he has not chosen to apply the same when he made his decision, whereas, a software merits for grant of patent if there is technical effect dehors any hardware.

2.2 Placing reliance on the authorities of the England and Wales Court of Appeal (Civil Division) in HTC Europe Co Ltd. Vs Apple Inc. (A.Nos.A3/2012/2043 and 2044), as well as the authorities of the High Court of Delhi in Ferid Allani Vs Union of India and Ors. (W.P.(C) No.7/2014 and CM Appl.40736/2019) and Microsoft Technology LIcensing, LLC Vs The Assistant Controller of Patents and Designs [2023:DHC:3342], the learned counsel argued that inasmuch as the reasoning of the Patent Controller runs counter to the ratio above referred to authorities, it is imperative that the impugned order is set aside.

3. The submissions of the appellant's counsel are carefully weighed. This Court considers that it would be apposite to refer to the following opinion of the Delhi High Court on the subject, which will have a bearing on the outcome of this case.

(a)In Ferid Allani Vs Union of India and Ors. (W.P.(C) No.7/2014 and CM Appl.40736/2019) case, the High Court of Delhi has held as below:

"10. Moreover, Section 3(k) has a long legislative history and various judicial decisions have also interpreted this provision. The bar on patenting is in respect of 'computer programs per se....' and not all inventions based on computer programs. In today's digital world, when most inventions are based on computer programs, it would be retrograde to argue that all such inventions would be patentable. Innovation in the field of artificial intelligence, blockchain technologies and other digital products would be based on computer programs, however the same would not become non-patentable inventions - simply for that reason. It is rare to see a product which is not based on a computer program. Whether they are cars and other automobiles, microwave ovens, washing machines, refrigerators, they all have some sort of computer programs in-built in them. Thus, the effect that such programs produce including in digital and electronic products is crucial in determining the test of patentability.

11. Patent applications in these fields would have to be examined to see if they result in a 'technical contribution'. The addition of the terms 'per se' in Section 3(k) was a conscious step and the report of the Joint Committee on the Patents (Second Amendment) Bill, 1999 specifically records the reas