Kroll Information Assurance, LLC v. The Controller General of Patents, Designs and Trademarks and Ors.: July 01, 2025: C.A.(COMM.IPD-PAT) 439/2022: 2025:DHC:5096: High Court of Delhi:Hon’ble Mr. Justice Amit Bansal
The appellant filed a national phase patent application titled “A System, Method and Apparatus to locate at least one type of person, via a Peer to Peer Network,” which aimed to identify users inadvertently or maliciously sharing sensitive information. The patent application was refused by the Assistant Controller of Patents and Designs on grounds that the proposed amendments exceeded the scope of the original claims under Section 59 of the Patents Act, that the claimed invention lacked inventive step under Section 2(1)(j), and that it fell within the category of a computer program per se or algorithm under Section 3(k).
Procedurally, after the First Examination Report raised objections, the appellant submitted amendments and responses, and a hearing was held. The Controller, however, rejected the application by order dated June 25, 2019, leading the appellant to file the present appeal under Section 117A of the Patents Act.
The dispute centered on whether the invention, which enabled search and profiling on a peer-to-peer network using specific search terms, was patentable or whether it was excluded as an algorithm or computer program per se without technical advancement.
In discussion, the Court referred to precedents including Lava International Ltd. v. Telefonaktiebolaget LM Ericsson, 2024 SCC OnLine Del 2497; Microsoft Technology Licensing v. Controller of Patents & Designs, 2024 SCC OnLine Del 3239; and Blackberry v. Controller of Patents & Designs, which held that for computer-related inventions to qualify for patents, they must demonstrate a technical effect or advancement beyond standard computing functions. The Court found that the invention merely executed standard keyword-based searches and profiling over a peer-to-peer network without enhancing hardware functionality, and thus it remained a computer program per se or an algorithm.
The Court partly accepted the appellant’s plea by setting aside the Controller’s rejection of the proposed amendments under Section 59, finding those amendments to be explanatory and within scope. However, it upheld the Controller’s refusal under Section 3(k), concluding the claimed invention did not show technical advancement to justify patentability.
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