Slightly long post……
The Madras High Court (MHC) has called a spade a spade. In Ab Initio Technology LLC v. Controller of Patents, MHC recognised and attempted to clarify the confusion surrounding Section 3(k). At various instances, we have highlighted that Section 3(k) jurisprudence has been plagued by terminological confusion, leading to fragmentation of jurisprudence and thus producing a cacophony of tests. It is admirable that MHC, for the first time, recognised the confusion surrounding Section 3(k) and some of the criticisms raised previously in this blog. It is also admirable that the judgment strived to address some of the confusion. Yet, the judgment seems to falter on at least three counts, indicative of the deep ‘technical’ mess we seem to find ourselves in.
To give a quick ‘TL;DR’ of the three issues with the judgement:
- MHC has defined the word ‘technical’ (a proxy for ‘per se’ in section 3(k)) in a manner that makes it functionally empty. In other words, when applied to practical cases, it will include everything and exclude nothing.
- When applying Section 3(k) to the invention in question, the Court seems to have concluded that the invention possesses technical effect/contribution based on features of the invention that are preparatory steps to generate a data lineage diagram, which is, to my mind, essentially a presentation of information and hence should be barred by Section 3(n). How can steps associated with producing an outcome that itself is barred by Section 3(n) be capable of producing a technical effect/contribution in an invention for the purposes of Section 3(k)?
- MHC also has failed to follow through on its own findings with respect to inventive step, treating it merely as an obviousness analysis and not scrutinising or explaining what constitutes a ‘technical advance’ in light of existing knowledge under Section 2(1)(ja).
With the TLDR done, for those who wish to venture forward into the meaty details and choice quotations from the judgment, please proceed below.
Invention in Question:
Ab Initio (patentee) had appealed the order of the Controller denying the grant of the patent titled “Graphic Representations of Data Relationship” (4693/CHENP/2010), tracing its priority from a US application (61/031,672). The invention was directed towards a method and a system for generating a data relationship diagram that maps the relationships between data items stored in large, discrete, and disparate databases. It helps a user trace the lineage (backwards or forwards) of a data item as it is processed, transformed, and analysed by various applications, similar to version tracing. The user first selects a data item, which triggers the automated process of querying, and subsequently identifies related data items that can be traced back to the first selected data item and then presents the information in the form of a data lineage diagram (see paragraphs 49-54 of the judgment for a more detailed explanation of the invention).
The image above illustrates the lineage of a data item, cust_id, showing its lineage or journey after being processed/transformed by multiple applications.
Controller’s Order:
The Controller’s order rejected the application as lacking novelty and inventive step in light of prior art D1. Secondly, he also stated that the invention is barred by Section 3(k).
The Controller with respect to Section 3(k) stated that the application does not discuss the type of data being utilised in the invention, hence not disclosing the specific technical effect of the invention. Secondly, he stated that the actual contribution (generating diagrams, query optimisation, automation, and search) is simply a computer programme run on a general-purpose computer and hence lacks further technical effect beyond normal interactions within the computer.
Regarding the rejection on the grounds of inventive step. The Controller cited Yahoo vs. Controller (which was in turn cited in the CRI guidelines), stating that an application can be rejected if the actual contribution or delta/difference from prior art falls into an excluded category and hence would not constitute a technical advance under Section 2(1)(ja). Here, since the actual contribution or the delta/difference in the light of prior art was deemed by the Controller to be a computer programme/algorithm in itself (on the difficulties in drawing the distinction between the two, I have discussed here), the invention was rejected under Section 2(1)(ja).
Single Bench attempts to set the Record Straight:
This blog, as mentioned at the start, has seen varied discussions on the ‘technical’ tests being developed by the Courts with respect to Section 3(k). It all culminated in a detailed submission to the IPO highlighting the fragmentation of jurisprudence with respect to Section 3(k). Affirming our previous criticisms indirectly, in para 42, the MHC notes:
“These precedents from the UK, EPO and India are replete with the expressions ‘technical contribution’, ‘technical character’, ‘technical effect’, ‘further technical effect’, ‘technical nature’, ‘technical advance’ and the like which do not find place in the statute. Because of the use of the above expressions interchangeably, as also the use of the expression ‘technical advance’ in Section 2(1)(ja) in relation to inventive step, there is considerable confusion warranting clarification.”
Thus, MHC recognised that there are two distinct issues: first, a cacophony of tests is being employed by Courts with respect to Section 3(k). Second, there is no clear distinction between the cacophony of tests and the ‘technical advance’ requirement under Section 2(1)(ja).
After identifying the two distinct problems, it attempted to solve them. It first distinguished between technical advance under Section 2(1)(ja) and technical effect/contribution in Section 3(k). Following the EPO, it stated that technical advance analysis under 2(1)(ja) is conducted in reference to prior art, referencing the two-hurdle approach followed by the EPO. The two-hurdle approach refers to the two levels of scrutiny applied to any EPO application. First, at the level of patentability where prior art is not considered (reduced to a mere formality), and second, at the level of inventive step where prior art is taken into consideration (relatively a more substantive examination).
Then it proceeded to clarify the meaning of the word ‘technical’ with respect to Section 3(k) and referred to the definitions in dictionaries. It then focused on two definitions provided in the Cambridge dictionary:
“ relating to practical skills and methods that are used in a particular activity”
“ relating to the knowledge and methods of a particular subject or job”
In the first post I had written for the blog, I had lamented that there is no definition of the word ‘technical’. So this should be a moment of rejoice. We finally have a legal definition of the word ‘technical’.
However, the definition appears to be functionally empty and, to some extent, circular. The word ‘technical’ is defined in a manner wherein it functionally yields only one outcome when applied to concrete situations: that the invention is not barred by Section 3(k). This outcome is made possible because, definition is overly broad, which then leads to circular reasoning. The definition would virtually include everything and exclude nothing, hence failing to draw any meaningful distinctions between excluded and non-excluded subject matter for the purposes of Section 3(k). Thus, it’s functionally empty.
For the sake of clarity, the function I am referring to is the ability of the definition of the word ‘technical’ when applied to facts to draw meaningful distinctions between excluded and non-excluded subject matter for the purposes of Section 3(k).
The Court then observes that, irrespective of the words used after the word ‘technical’, such as ‘effect’, ‘contribution’, or ‘character’, the final outcome does not change. It then hints at a different formulation that “the word ‘technical’ is always used in the sense of practical methods and skills used in the physical and natural sciences”. This alternative formulation is also liable to the criticisms made above.
Going the EPO WAY, But What About S. 3(n)?
After a detailed discussion of UK and EPO precedents and defining the word ‘technical’. MHC concluded that not all computer-implemented inventions would clear the 3(k) bar immediately, as is the case with the EPO. Yet found that “the Indian approach is substantially in line with the EPO Board’s jurisprudence but not with that of courts in the UK”. On the one hand, MHC is unwilling to state that all computer-implemented inventions will clear the patentability bar simply because they are computer-implemented (as is the case with EPO). But also finds that the Indian practice is substantially in line with the EPO.
Thus, the Court, after a detailed discussion of the invention, concluded that the invention utilises computer programmes and algorithms, and such use leads to technical contribution/effects including reduced query time, process automation, and the generation of a data lineage diagram. Features of the independent claim were treated as technical features enabling the patent application to clear the Section 3(k) bar. Yet, this conclusion is puzzling since the final outcome of the above-mentioned steps is to generate a data lineage diagram, which is simply a presentation of information and is therefore barred by Section 3(n).
Both the Controller and the Court seem to have missed the fact that the invention itself is a method and system to ‘present a data lineage diagram’, which is presentation of information and is barred by Section 3(n). Do note that Section 3(n) is absolute, not qualified by ‘as such’ or ‘per se’; therefore, the invention would have fallen under Section 3(n) even if there were prior steps that are part of the invention that in itself do not fall under Section 3(n), because they are simply preparatory steps to present information.
Hence, it’s surprising that features that led to an outcome, i.e. ‘present a data lineage diagram’, are considered to provide technical effect/contribution when the outcome itself would make the invention non-patentable since it is barred by a different sub-section of Section 3.
A few thoughts on inventive step:
MHC had noted that ‘technical advance’ is distinct from the ‘technical’ test in Section 3(k). That technical advance is to be analysed in light of the prior art. MHC, in its inventive step analysis, merely finds that the problem prior art D1 seeks to solve is distinct from the problem the patent application attempts to solve, thus concluding that the patent application has inventive step.
Unfortunately, what is missing is the failure to identify which features of the invention provided the technical advance over and above those of prior art D1. Or what evidence was presented with respect to the economic significance of the invention? This gains salience when the Court sought to draw a distinction between ‘technical advance’ under Section 2(1)(ja) and technical tests under Section 3(k). MHC appears not to have followed through on its own finding regarding inventive step in paragraph 43. Maybe it does not matter since the outcome would not have been any different.