Section 3(k) is one of the most curious provisions in the Indian Patents Act. A mere 13-word sub-section, 3(k) has today become a hot mess. Despite the release of CRI Guidelines in July 2025 (the fourth such iteration of the guidelines), 3(k) is none the fuzzier. The actual scope of the words used in 3(k) continues to elude us.
Last week, the Delhi HC, in Blackberry v. Controller, had another opportunity to opine on patentability u/s. 3(k). The invention in question was a method to display messages on a keypad phone, where messages with a common address were coded with the same color. For instance, if I implemented this invention on my mobile, all mails I receive from my college (domain name [at]nls[dot]ac[dot]in) would be colored (um?) red. To ensure that a message is delivered to the intended recipients, the method displays a color-coded list of all the recipients of a message for the user. It enables a user, before sending a message, to manually scan and identify if the message is being sent to someone outside the organization or unintended recipient.
This invention, however, was rejected by the Court as unpatentable subject matter u/s. 3(k). Although the Court also dealt with lack of inventive step, the focus in this post is on Court’s analysis of the invention u/s. 3(k).
How Do You Overcome 3(k)?
Last year, Swaraj, Bharathwaj, Anushka, and I had prepared a chart, mapping the various tests applied by Courts to decide 3(k) objections. Playing around with the word ‘Technical’, Courts (mainly DHC) have fashioned six distinct (6) tests to decide whether a computer related invention (CRI) is barred u/s. 3(k). Upon closer examination, however, it appears that these tests create distinction without any difference (refer to the chart) As Swaraj wrote, these various tests have contributed to creating ‘interpretive inconsistencies’, with no clarity on when can an invention overcome 3(k).
To gain a clearer picture, I went back to the HC judgements (Delhi and Madras) post-Ferid Allani, which had so far decided objections u/s. 3(k) against a CRI. On closer scrutiny, I could discern two tests which the Delhi HC was applying while deciding whether a CRI invention was patentable or not. The Madras HC has followed the first approach so far in Ab Initio and Microsoft Technology. For my own sanity (and the readers), I will not use, as far as possible, the word ‘technical’ to explain these approaches. Please read Bharathwaj’s poignant post on why we should stop using the ‘T’ word.
- First Test– Assessing impact on the apparatus/hardware
The first test asks whether the computer programme has brought about an improvement in the general functionality of the hardware. Here, functionality refers to the internal operations of a hardware when performing a task. If the programme, when implemented on the hardware, enables it to perform the task more efficiently, the invention overcomes sec. 3(k).
Let me illustrate this with some cases, although very briefly-
- Ab Initio v. Asst. Controller– The invention related to a data processing method, which could discover hidden relationship between various fields of a huge dataset. The Court rejected the objection u/s. 3(k), noting that the invention resulted in increased speed, efficient storage system, and better computation for the computer.
- Blackberry v. Controller– The invention related to a method of managing media content where the user’s device, based on his preference, would automatically download the media in metadata file format. The Court noted that the invention provided optimized storage and improved retrieval process, which was a significant enhancement in the functionality of the device.
- Microsoft v. Asst. Controller– The invention claimed a more efficient method of compression of media content, resulting in optimized compression as well as reduced storage requirement. The Court observed that this constituted enhancement in the functionality of the computer. Objection u/s. 3(k) was rejected.
- Koninklijke Philips– The invention claimed EFM+ coding which could convert raw data into 16-bit code and encode it on DVD. The invention resulted in more efficient utilization of physical space on DVD, enabling greater data storage. Thus, objection u/s. 3(k) was rejected.
As seen above, this approach sees whether the programme results in an improvement in the internal functioning of the hardware. The improvement should be directly attributable to the computer programme. The question to be asked is- if not for the computer programme, could the hardware normally have achieved that improvement. In case the answer is no, the invention is excluded u/s. 3(k). This is precisely why, in Kroll v. Controller, the invention was rejected u/s. 3(k) for not resulting in advancement of the hardware. Madras HC has followed the same approach in Ab Initio v. Controller and Microsoft v. Asst. Controller.
The biggest endorsement for this test also came in Lava v. Telefonktiebolaget. However, the Judge in that case had made an error, holding that even algorithms are patentable if their implementation results in improvement in functionality of the hardware.
- Second Test– Overcoming a Limitation in the field of Invention
The second test, in contrast, does not focus on the impact that the programme has on functionality. Rather, it is more of a pseudo-inventive step inquiry. I use the word ‘pseudo’ because, at this stage, the inquiry is not whether the invention is non-obvious to a POSITA. The simple question to be asked is- does the invention overcome a pre-existing problem in the field of a given invention? If it does, the invention is not excluded u/s. 3(k). The analysis is not concerned with the changes in functionality of the attached apparatus.
Again, I will illustrate these with two cases from Delhi HC-
- Microsoft Technology v. Asst. Controller– The invention claimed a two-tier authentication process to prevent malicious users from getting unauthorized access across a network. The invention did not result in a physical or tangible change in the hardware. Rather, the impact of the invention was at the user level, by preventing unauthorized access and thus improving security for users.
Rejecting the objection u/s. 3(k), the Court noted- “claimed invention offers a novel and inventive technicalsolution to a security problem related to the authentication of users for accessing sub-location(s) within a network location.”
- Comviva Technologies v. Asst. Controller– The invention claimed a two-step verification process for authentication of electronic payment. The Court noted that the invention was an ‘advancement’ on existing solutions against unauthorized transactions. The objection u/s. 3(k) was rejected since the invention improved security for users doing electronic payment.
As evident, although an invention may not result in improvement in the hardware, it may still be patentable if it overcomes a pre-existing problem in the field of the invention. The improvement in this case is not at the hardware level, but instead at the level of user experience.
It is important to remember that, at this stage, there is no comparison with prior art. Otherwise, there is a risk of collapsing what are meant to be separate inquiries of inventive step and patentability.
Does Improving User Experience Overcome 3(k)? Hell Nah
Now that I have laid out the framework within which Courts are working while deciding objections u/s. 3(k), let me move on to discussing the present case and where it fits within these approaches.
For details of the invention, refer back to second para of the post.
- Did the invention improve functionality?
The Plaintiff argued that the invention, in ensuring that a message is sent only to intended recipient(s), saved time and resources of the hardware. This, it was argued, resulted in improved functionality.
The Court, rightly, rejected this. The so-called “improvements” are vague and not specific. The reduction in time spent does not result in any tangible or physical change in the hardware, leave alone improvement. Rather, it enhances user experience which is not a relevant consideration here. Further, it does not clarify what it means by resources. Does it mean optimization in computation? Or something else?
The Court rightly observed that the invention did not enhance the system’s functionality.
- Did it solve a pre-existing limitation?
The problem, as mentioned by the applicant, was- how to quickly distinguish between two or more message recipients having the same name?
On a handheld device with a smaller screen size, it may become harder for a user to identify recipients or navigate through mails. Color coding mails make it easier for a user to detect whether a recipient belongs to the same organisation or not. This would ensure that confidential mails are not sent outside the group. For instance, even if two or more recipients have same names, the user can easily identify if a certain individual is not part of the organisation based on color code.
The invention, thus, enhances user experience by ensuring mails are only sent to intended recipients.
The Court, rejecting the argument, noted-
“An error in sending a message to a recipient cannot be considered a technical problem as it depends on the person sending the message… a technical problem is universal in nature and technicality is not varied person to person and an error in sending a message with respect to the recipient cannot be considered a technical problem as it depends on the person sending the message.” (Para 46-47)
With due respect, I do not agree with this part of the judgement. It is unclear what the Court meant by the word ‘universal.’ Granted, individuals suffering from colour blindness have nothing to gain from this invention. But does it mean every user should face the same problem? If true, then the patent, for instance, granted to Netflix for ‘skip intro’ feature is also unpatentable (Patent no. 491950). I could very well argue that some users don’t require this feature and thoroughly enjoy viewing the intro for ‘Peaky Blinders’ or ‘Breaking Bad’ each time it is on.
Further, a problem can always vary from one person to another. For instance, text-to-speech systems for blind persons, oftentimes, are unable to read out mathematical equation or other two-dimensional figure. If an invention overcomes this problem, can the Court reject it, arguing that not everyone faces this issue and it varies from one person to another? Surely not.
As Microsoft and Comviva show (discussed earlier), improvement in user experience are also relevant considerations u/s. 3(k). Improvement in user experience can result either from improvement in security or enhanced navigability for user through improvement in user interface.
The fragmentation within the 3(k) jurisprudence has resulted precisely in this situation- what you have today are inconsistent outcomes despite similar fact situation. In one case, improvement in user experience is sufficient to overcome 3(k) and in another, it is not. As some of us here continue calling this fragmentation out, I hope the Courts will understand the larger implications it may have going forward on ‘consistency of outcomes.’