FERID ALLAN’S VS UNION OF INDIA, 2019

INTRODUCTION:

IPR is a exclusive right granted to the inventor for his creation/inventions. Intellectual Property Rights is gaining significance in the countries like India, it appears as a centre for innovation, digital entrepreneurship, and industrial advancement. The remarkable judgement by Delhi High Court in Ferid Allani vs Union of India, 2019, signifies a critical turning point in Indian intellectual property legislation, especially regarding the patentability of computer-related inventions. In the context of Section 3(k) of the Patents Act, 1970—which prohibits “computer programmes per se” from receiving patent protection—this case contested the narrow interpretation used by the Indian Patent Office (IPO) and provided a broader, more contemporary interpretation that aligns better with global best practices.

FACTS OF THE CASE:

Court: Delhi High Court

Case Name: Ferid Allani v. Union of India

Judgement Date: December 12, 2019

Bench: Justice Prathiba M. Singh

Petitioner: Ferid Allani

Respondent: Union of India & Controller of Patents

Subject: Patent Law – Section 3(k) of the Indian Patents Act, 1970.

The dispute in Ferid Allani v. Union of India arose from the rejection of a patent application dealing with a computer-related innovation. The applicant/Petitioner, Ferid Allani, who is a French citizen, applied for an international patent under the Patent Cooperation Treaty (PCT) back in the year 2002. The application continued to the Indian national phase with Application No. IN/PCT/2002/00705/DEL and invoked priority from 2000. The invention was called “Method and Device for Accessing Information Sources and Services on the Web,” and was focused on enhancing user access to web-based applications, especially from limited computational devices, such as early-model mobile phones and PDAs.

The invention allowed users to interact with web services without necessarily having to browse through intricate URLs or site hierarchies. The application suggested an interface facilitating smooth access through uncomplicated menus that were capable of fetching dynamic content. The invention, although software-based, provided a clear upgrade in user interaction, performance, and network efficiency—factors the applicant contended as making up a “technical effect.”

The Indian Patent Office did reject the application on several occasions, however, citing Section 3(k) of the Patents Act, 1970, which specifically excludes “computer programmes per se” from eligibility for a patent. For all the applicant’s amendments and written submissions as to how the invention was more than just software code and provided technical innovation, the Patent Officer rejected his application.

Later, the petitioner filed an appeal before the Intellectual Property Appellate Board (IPAB), where the refusal was upheld but without making a thorough analysis of the technical contribution of the invention. Dissatisfied petitioner filed a writ petition under Article 226 of The Constitution of India in Delhi High Court on the grounds that the IPO and IPAB did not follow proper standards of law and neglected established world standards concerning software patentability.

LEGAL ISSUES AND ARGUMENTS:

The main issue in Ferid Allani v. Union of India was whether computer related invention falls under the Section 3(k) of Patent Act, 1970. The questions brought before the Delhi High Court:

• Whether computer-related inventions, particularly those implemented through software, are patentable under Indian Patent Act, 1970.
• Whether the term “ per se” in Section 3(k) of Patent Act, 1970, exclude all computer based invention from patent protection.
• Whether the rejection of the application without adequately assessing its “technical effect” or “technical contribution” was legally sustainable.

Argument of the Petitioner:

• Technical Effect and Contribution: The petitioner, Ferid Allani, maintained that the claimed invention was more than a computer program but rather a technical solution to a genuine problem encountered in the art of access authentication for computer systems. The invention attempted to streamline and improve the usability and security of authentication methods, which was a technical improvement.
• Interpretation of Section 3(k): It was argued that Section 3(k), when interpreted in international standards and jurisprudence, did not exclude software-based inventions with technical effect. The use of the phrase “per se” in Section 3(k) was emphasized as indicative of legislative intent to allow for software-related inventions that have tangible technical applications.
• Inconsistency in Patent Office Practice: Allani’s counsel highlighted that the Indian Patent Office had, in other cases, granted patents for similar computer-related inventions. Thus, it is inconsistent to deny the present application without applying the technical effect test, according to Indian patent examination guidelines.
• Global Precedent and Harmonisation: The petitioner also referred to international jurisprudence, especially of the European Patent Office (EPO) and United States Patent and Trademark Office (USPTO), where inventions of similar nature had already been issued patents on account of their technical contribution, contending that India must take an innovation-oriented approach.

Argument of Respondent:

• Section 3(k) as an Exclusionary Clause: The Indian Patent Office had contended that the claimed invention was simply a computer program, and hence directly excluded from being patented under Section 3(k). The IPO had insisted that the statute clearly exclude computer programs and algorithms from being patented.
• Absence of Hardware: The IPO additionally argued that the patent application included no new hardware element or combination but only the software, thus falls under prohibited category.
• Guidelines are not Law: Respondents insisted that the Patent Office Examination Guidelines, which refer to the “technical effect” test, are not binding statutory documents and cannot prevail over the statute.

COURTS DECISION:

In its decision, the Delhi High Court made a forward-thinking and purposive interpretation of Section 3(k) of the Indian Patents Act, 1970. The Court was aware of the increasing significance of digital technologies and the requirement to understand software patents in a well-balanced perspective in an innovation era where technological developments are highly dynamic.

• Definition of “Per Se” under Section 3(k): The Court laid heavy emphasis on the word “per se” used in Section 3(k). Relying on legislative intention and past judgments, the Court reasserted that the exclusion in the statute is not absolute, and software-based inventions which yield a “technical effect” ought not be excluded from being patented simply because they are implemented through computer programs. It observed that “The application of the terms ‘per se’ to Section 3(k) was meant to guard against excluding bona fide inventions that have arisen from computer programmes from getting patent.” The Court adopted a balanced view that neither grants blanket patentability to software-based inventions nor excludes them categorically.
• Stress on Technical Contribution: In determining patentability, one needs to consider whether the invention show a technical contribution or technical effect, like efficiency, improved data processing, better user interface, or more efficient system architecture. The mere presence of software does not disqualify an invention if it offers practical, industrially applicable improvements. This is in line with other jurisdictions like that of the European Patent Office (EPO), where the “technical effect” test is a standard practice in determining patentability of computer-related inventions.
• Critique of Patent Office Approach: The Court has criticised the rejection of patent application by the Indian Patent Office on the ground of computer program. The Court held that the IPO has not applied the proper test of whether the invention is a solution to a technical problem. The Court additionally observed inconsistencies within the practices of the IPO and highlighted the significance of case-by-case determination rather than categorical rejections.
• Direction to Reconsider Application: The Court set aside the order rejecting Ferid Allani’s patent application and directed the Patent Office to re-examine the application in light of the judgment, and to consider whether the invention disclosed a technical effect or contribution that justified grant of a patent. This effectively established a precedent requiring the IPO to look beyond mere software implementation and examine substantive claims of innovation and utility.

CONCLUSION:

The Judgement has significant implication on future patent filings involving software-related inventions in India. It offers a clear directive to patent examiners to take into account the technical contribution of an invention in examining its patentability. The judgement suggests that inventions involving computer programs for technical advancement—whether in enhancing efficiency, performance, or usability can potentially be patentable, as long as they pass the technical effect test.

The decision also paves the way for more innovation in fields such as artificial intelligence (AI), machine learning (ML), and blockchain technology, which are all dependent on solutions that are software-driven. The verdict is likely to have implications on the evaluation of software patents in India and lead to a more balanced approach that rewards true technical developments.

REFERENCE(s):

1. Ferid Allani v. Union of India, W.P. (C) No. 7 of 2014, Delhi High Court.
2. The Patents Act,1970, Sec 3(k), India Code (1970),https://legislative.gov.in.
3. Controller General of Patents, Designs & Trade Marks,Guidelines for Examination of Computer Related Inventions (CRIs) (Feb. 19, 2016),