Delhi High Court holds a two-cookie authentication method is not a computer programme per se under section 3(k)

2023-05-15India

Microsoft Technology Licensing, LLC v The Assistant Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 29/2022, 2023:DHC:3342 (Delhi High Court, 15 May 2023) (Sanjeev Narula J), setting aside the Controller's order of 11 April 2019 refusing Application No. 1373/DEL/2003

Indian Patent Application No. 1373/DEL/2003, filed by Microsoft on 7 November 2003, claims a two-tier authentication in which one cookie authenticates a user at a network location and a second cookie authenticates the user at a sub-location within it. The Assistant Controller refused claims 1 to 28 on 11 April 2019 under section 3(k) of the Patents Act 1970 as a computer programme per se, calling the claims "a set of algorithm" executed "in a pre defined sequential manner." Justice Sanjeev Narula of the Delhi High Court set the order aside. The judgment holds that "The interpretation of 'per se' under Section 3(k) of the Act has been entirely overlooked by the Controller," that "An invention should not be deemed a computer program per se merely because it involves algorithms," and that the assessment turns on "the technical advancements it offers and its practical application." The court found that "The technical contribution of this invention is the technique of using two different cookies," that "The technical effect is the improved security of the authentication process," and that the application "passes the first step and does not fall within the excluded categories." It remanded for examination of novelty and inventive step, with a decision due within one month, and directed the Patent Office to give examiners indicators for computer-related inventions, citing the signposts of the European Patent Office.

What it changesIndia is reading section 3(k) the way the European Patent Office reads Article 52: a computer-implemented claim survives the exclusion if it makes a technical contribution, and here the court decided that question itself rather than sending it back to the examiner. An applicant filing a machine learning case in India should write the specification so the technical effect can be lifted straight out of it, naming the technical problem, the mechanism that solves it and the measurable result, in the same terms a European application would use, and should expect the Controller to look for that language before the novelty analysis begins. An objection that the invention is merely an algorithm should be answered with the court's own test: what does the sequence of steps do to the machine, the network or the data that the prior art did not. The ruling is a single-judge decision of one High Court, and the Patent Office has yet to issue the examination examples the court directed it to prepare.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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