Ab Initio Technology Vs Assitant Controller of Patent

Background:

The case revolves around the rejection of patent applications Nos. 6500/DELNP/2011 and 6501/DELNP/2011 by the Indian Patent Office. The applications were filed by AB INITIO TECHNOLOGY LLC, a company incorporated in the USA, and were divisional applications of Indian Patent Application No. 1167/DELNP/2006. The Patent Office rejected the applications on the grounds that the subject matter was not patentable under Section 3(k) of the Patents Act, 1970, as they related to a computer program per se or algorithm. Additionally, Application No. 6500/DELNP/2011 was rejected for not being a valid divisional application under Section 16(1) of the Act.

Appellant's Contention:

The appellant argued that the patent applications involved a data processing method that had a 'technical effect' and thus should be patentable. They cited previous court decisions and the legislative history of Section 3(k) to support their claim.

Respondent's Counter Argument:

The respondent, countered that the invention was merely a data processing method without any technical effect and that it did not meet the criteria for patentability.

Judgment:

The Court allowed the appeals to the extent that the objections under Sections 3(k) and 16(1) of the Act were not tenable. He emphasized that the determination of patentability should focus on the underlying substance of the invention rather than its form. The court found that the invention had a 'technical effect' by increasing the speed of functional dependency analysis and saving computer resources, which went beyond the normal interaction between software and hardware.

However, the court remanded the matter to the Office of Controller General of Patents & Designs for fresh consideration regarding the aspect of Section 2(1)(ja) of the Act, which pertains to the inventive step and prior art. The court directed that a de novo hearing notice be issued and the applications be examined afresh within three months of the receipt of the order.

Conclusion:

The High Court of Delhi set aside the impugned orders rejecting the patent applications and directed a fresh examination of the inventive step and prior art aspects. The court's decision highlights the importance of considering the 'technical effect' of computer-related inventions in determining their patentability.

Case Citation: Ab Initio Technology Vs Assitant Controller of Patent:30.07.2024 : C.A.(COMM.IPD-PAT) 26/2021 : Delhi High Court: Anish Dayal. H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]