The Delhi High Court in Kroll Information Assurance, LLC v. Controller General of Patents, Designs & Trade Marks upheld refusal under Section 3(k) but set aside the Section 59 objection.
In the present case, the Court considered an appeal under Section 117A from a refusal of Indian Patent Application No. 8100/DELNP/2007 (by order dated 25 June 2019) titled “A System, Method and Apparatus to locate at least one type of person, via a peer-to-peer network.” The prosecution history included objections under Section 2(1)(j)/2(1)(ja), Section 10(4)(c), Section 3(b), and Section 3(k), with a hearing-stage objection to amendments under Section 59/Section 57; the Controller ultimately refused under Section 59, Section 2(1)(j), and Section 3(k).
With regard to the Section 59 objection, the Court held that the additional features introduced via sub-paragraphs (iii) and (iv) of amended Claim 1 were “in the nature of explanation,” and narrowed the claim scope, and “are fully within the scope of Section 59 of the Act,” setting aside the Controller’s contrary finding.
On Section 3(k), the Court held that the invention used conventional and generic hardware executing a program to connect to a peer-to-peer network and perform searches based on user-provided keywords, amounting to a mere sequence of instructions without any technical enhancement of hardware. It characterized the profiling component as abstract and lacking technical character; Claims 1–7 were “computer programme per se” and Claims 8–10 “algorithms.” The refusal under Section 3(k) was therefore upheld, and the appeal was disposed of.
The present judgment clarified two important aspects of Indian patent law. First, it affirms that amendments which merely narrow or explain claim scope fall within the ambit of Section 59 and should not be rejected on that ground alone. Second, it reiterates the settled position that computer-implemented inventions lacking demonstrable technical effect or hardware integration remain excluded under Section 3(k).
Contributor(s)
Contributor to present post is Abhilasha Niroola.
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