Computer Programme per se and the Patent Law Threshold
Introduction: This case addresses a crucial intersection in Indian patent law, focusing on whether an invention that involves software or algorithms qualifies as patentable subject matter under Section 3(k) of the Patents Act, 1970. The case of Kroll Information Assurance, LLC v. Controller General of Patents, Designs and Trademarks engages deeply with the exclusion of “computer programme per se” and “algorithm” from the definition of inventions. The decision sheds light on the permissible scope of claim amendments under Section 59 and tests the limits of patentability of computer-implemented inventions (CIIs).
Factual Background:The appellant, Kroll Information Assurance, LLC, a U.S.-based entity, filed an Indian patent application numbered 8100/DELNP/2007, titled “A System, Method and Apparatus to locate at least one type of person, via a Peer to Peer Network.” The application was a national phase entry of a PCT application filed on April 11, 2006, claiming priority from a U.S. application dated April 12, 2005.
The invention purported to offer a technological solution for locating users (or types of persons) inadvertently or maliciously sharing sensitive information over peer-to-peer networks. The claimed invention employed specific search terms known to be associated with such content and profiled users accordingly.
Procedural Background:The application was published on July 4, 2008, and underwent examination following a request dated November 1, 2007. The First Examination Report (FER) was issued on February 19, 2013, raising objections under Sections 2(1)(j), 2(1)(ja), 3(b), 3(k), and 10(4)(c) of the Act. The appellant responded on October 22, 2013, including proposed claim amendments.
A hearing notice dated April 10, 2019, reiterated objections under Sections 2(1)(j), 3(k), and Section 59 (concerning claim amendments). Following the hearing on May 13, 2019, the Assistant Controller of Patents passed an order on June 25, 2019, rejecting the application on the following grounds: the claim amendments violated Section 59; the claimed invention lacked inventive step under Section 2(1)(j); and the subject matter was non-patentable under Section 3(k).Kroll challenged this decision under Section 117A of the Patents Act by filing an appeal before the Delhi High Court.
Legal Issue: The key issues before the Hon’ble Delhi High Court were:Whether the proposed claim amendments were permissible under Section 59 of the Patents Act, 1970?Whether the claimed invention qualified as patentable subject matter or was excluded under Section 3(k) as an “algorithm” or “computer programme per se.”Whether the Controller’s assessment of the invention’s technical contribution and inventive step was valid in law.?
Discussion on Judgments: Nippon A & L Inc. v. Controller of Patents, 2022 SCC OnLine Del 1909:Relied upon to interpret Section 59 of the Act, the Court clarified that amendments must be by way of disclaimer, correction, or explanation, and must not broaden the scope of the originally filed claims. The decision was instrumental in evaluating whether Kroll’s proposed amendments exceeded the permissible scope.
Lava International Ltd. v. Telefonaktiebolaget LM Ericsson, 2024 SCC OnLine Del 2497:Cited by the appellant to argue that software-related inventions may be patentable if they produce a technical effect or advance the functionality of hardware. This case emphasized that a mere inclusion of software elements does not automatically exclude an invention under Section 3(k).
Microsoft Technology Licensing v. Controller of Patents & Designs, 2024 SCC OnLine Del 3239:Applied by the Court to reiterate that software must result in a specific and credible technical enhancement to avoid exclusion under Section 3(k). A mere implementation of search algorithms, even on hardware, is insufficient.
Blackberry v. Controller of Patents & Designs, 2024 SCC OnLine Del 3791:Relied upon by the respondent and referred to by the Court, this case held that inventions based solely on software instructions without substantial hardware impact or technical advancement are barred under Section 3(k).
Guidelines for Examination of Computer Related Inventions (CRI Guidelines), 2017:These were used as interpretive tools to assess the subject invention’s technical contribution. The Guidelines mandate focusing on the “underlying substance” of the invention to determine patentability.
Reasoning and Analysis of the Judge: The Court first addressed the objection under Section 59. Upon a comparative reading of the originally filed claims and the amended ones, the Court found that the additional features (particularly sub-clauses iii and iv of Claim 1) narrowed the claim scope and served an explanatory purpose. These additions were found to be consistent with the complete specification and did not introduce any new matter. Consequently, the rejection under Section 59 was held to be erroneous.
However, the primary hurdle lay in the non-patentability under Section 3(k). The Court analyzed the claimed invention’s technical contribution and concluded that the invention was primarily a sequence of instructions executed by generic hardware. The search functionality and profiling based on keyword matches were seen as typical outputs of conventional computing systems.
The Court further observed that the invention did not offer any advancement or transformation of hardware capabilities. While the use of peer-to-peer networks and specific search terms was noted, these were not sufficient to demonstrate technical advancement or effect.
Drawing from the Microsoft, Lava, and Blackberry precedents, the Court held that a mere implementation of software logic or algorithms—even if practically useful—does not cross the threshold for patentability in the absence of hardware-level enhancement.
The appellant’s reliance on foreign grants (including from the USA, China, and Japan) was not found persuasive, as Indian patent law has specific statutory exclusions under Section 3(k) that are distinct from other jurisdictions.
Final Decision: The Court allowed the proposed claim amendments and overruled the Controller’s findings under Section 59. However, it upheld the Controller’s decision refusing the patent application under Section 3(k) on the ground that the claimed invention was a computer programme per se and an algorithm, with no demonstrable technical effect or hardware advancement. The appeal was accordingly dismissed.
Law Settled in This Case:This case reinforces that: Claim amendments are permissible under Section 59 if they narrow the scope and are supported by the original disclosure. For inventions involving computer programmes to be patentable in India, they must demonstrate a tangible technical effect or hardware-level transformation. Search mechanisms and profiling based on keyword logic, even when implemented via sophisticated systems, do not inherently constitute patentable subject matter under Section 3(k). The mere presence of computer implementation or general-purpose hardware does not suffice to escape the bar under Section 3(k).
Case Title: Kroll Information Assurance, LLC v. Controller General of Patents, Designs and Trademarks and Ors.:Date of Order: 01 July 2025:Case Number: C.A. (COMM.IPD-PAT) 439/2022:Neutral Citation: 2025:DHC:5096:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Amit Bansal
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
