In a judgement passed on May 15, the Delhi High Court despite noting the lack of clarity on the concepts of “technical effect” and “contribution” in the context of the patentability of Computer Related Inventions, declared that the subject invention had technical effects. Highlighting this contradiction within the judgement, we are pleased to bring to you this guest post by Bharathwaj Ramakrishnan. Bharathwaj is a student at the Rajiv Gandhi School of Intellectual Property Law, IIT Kharagpur and loves reading books and IP law.
Microsoft Technology Licensing LLC V. The Assistant Controller of Patents and Designs- A Reasoned Judgement or Inherently Contradictory?
By Bharathwaj Ramakrishnan
Recently, a catena of judgements has emerged from the Delhi HC on Computer Related Inventions (CRIs), starting with Ferid Allani, which was analysed here. The courts have struggled to draw the line which separates “computer programme per se” from those that supposedly have a technical effect or contribution. In this regard, Delhi HC gave an interesting judgement in Microsoft v. Asst. Controller of Patents, which even though may seem well reasoned on the surface, is inherently contradictory at a closer look.
The Invention in Question
“Methods and Systems for Authentication of a User for Sub-locations of a Network location” was the invention in dispute. The claims in the complete specifications (Application No. 1373/DEL/2003) explain the invention as follows: “providing, by a processor, a network address having a sub location to the computer, wherein the network address is a domain that requires at least two cookies to provide user authentication to access the sub-location; providing, by the processor, a first cookie to the computer for user authentication for the network address, wherein the first cookie provides user authentication for the network address and does not provide authentication for the sub-location providing, by the processor, a second cookie to the computer for user authentication for a first sub-location of the network address; when the computer attempts to access the network address, validating, by the processor, the first cookie to authenticate the user for the network address; and validating, by the processor, the second cookie to authenticate the user for the first sub-location of the network address.” Thus, the invention seeks to use a two-cookie authentication system to reduce the security risks which would have been higher when only one cookie is used. The invention also compartmentalizes access to various sub-networks to a potential user through this invention, thus increasing network security.
The question before the court was whether this invention would fall under the exclusion clause or have a technical effect or contribution and, therefore, could be granted patent protection.
The Reasoning of the Court
The court was clear that since this was a CRI, the analysis would hinge on defining “Technical effect or contribution”. The court termed the technical problem as “A security risk existed where cookies are used to authenticate the user for the visited network location and the sub-location. A malicious user may attempt to steal such cookies that are uploaded from other user computer(s) when they are visiting the network location and can then impersonate such users to gain access to sub-locations within the network location.” The solution or contribution is that the invention uses a two-step authentication with cookies to restrict access to sub-networks, thus enhancing network security. The court took this as an opportunity to explore the legislative history of section 3(k) as it meandered its way into the statute. The legislative history of the provision has previously been discussed here and here. The court explained technical effect and contribution as follows: “If a computer-based invention provides a technical effect or contribution, it may still be patentable. The technical effect or contribution can be demonstrated by showing that the invention solves a technical problem, enhances a technical process, or has some other technical benefit.”
In a subsequent paragraph, the court observes, “The concept of technical effect and contribution is crucial in determining the patent eligibility of CRIs, but there is currently a lack of clarity in this area.” Then, the court further observes, “Therefore, there is a pressing need to clarify these concepts in order to strike a balance between protecting the rights of inventors and promoting the public interest and social welfare.” Thus, it is reasonable to note that the court is concluding that existing definitions or jurisprudence around the definition of “technical effect or contribution” is unclear.
Now, one might expect the court to use this as an opportunity to clarify it. However, the court decided that clarity might be best brought about if examples are provided of what can be patented subject matter and what is excluded. The court also concluded that it did not have the expertise to engage in this exercise and asked the Patent Office to come up with examples as they have the technical expertise to do it. But in the end, it is unclear who needs the clarity on the matter- the court or the examiner. One can only assume both because, in the judgement, the court itself does not seem to elaborate on what constitutes technical effect other than what I have reproduced above.
The Inherent Contradiction
The court, after acknowledging that the term technical effect or contribution is not apparent and after going to the extent of suggesting that the Patent Office should issue clarifying examples, decided that the concerned invention had a technical effect or contribution. The court observed, “The technical contribution of this invention is the technique of using two different cookies for providing authenticated access to a client computer accessing a sub-location(s) within a network location, which simplifies user interaction with content received from feeds. Overall, the subject patent enhances the security of accessing sub-locations of network locations and streamlines the user experience.” The court then clarified that there is a technical effect in the invention. And that the examiner must proceed and examine other aspects like novelty and inventive step, and that the first hurdle under section 3 has been crossed.
What I learn both from the judgement itself and the complete specification (CS) is that they use two cookies to increase security. In the CS, they also say that usually in the industry this is done only with the help of one cookie. From what I can understand, this means that what the court thinks is technical contribution is this addition of one cookie which in turn creates this system which in turn produces a technical contribution (enhanced security). Now to what extent is this a leap in network security, I am not sure nor am I making any positive or negative claims.
However, let’s try to peel this off to understand how the court may have approached it. First, this is a system of authentication. On reading the judgement one can say it is this system which in turn generates an effect which is enhanced security and reduction of security risk. In other words, this arrangement of things which when placed together is producing an effect. Now there is authentication through one cookie at a network server in the market already which the CS itself concede. So the Patent is not protecting the code or the authentication system with one cookie but this addition, this new system that has been created when that new cookie is added. This in turn leads to a new authentication system, which in turn is the claimed technical contribution of enhanced security.
My reading is that the court seems to be first saying a technical effect is needed for a software patent to be granted, and then pointing to an aspect of the invention and saying it has a technical effect. But between these two points, the court does not seem to clarify as to what helps the court identify what is technical effect or how to find one. I have gone through other judgements as well and there too it has not been made clear what constitutes technical effect. But, regardless, even if I’ve understood those incorrectly, this is one judgement where the court admits that the idea itself is not clear and yet declares that addition of one cookie and new authentication system as having a technical effect.
Now is the technical effect threshold crossed when a solution is found to a problem or in other words it has industrial application? Meaning, can the patentee show there is a problem and say my patent solves it and it is a CRI? But as seen above, this whole event is a contradiction in terms; on the one hand, the court is claiming that the phrase “technical effect or contribution” is not clear and, on the other hand, the court is also declaring that the invention crosses the technical effect threshold. Taken to its logical conclusion, the court should have propounded a rule that helps one distinguish between what constitutes technical effect and what does not or should have remanded the issue back to the Patent Office to decide on the invention’s technical contribution. To be fair to the court, it had observed that it is challenging to develop a general rule as to what constitutes technical effect or contribution for various technologies that come under CRI. With the fast-paced nature of innovation in the field, such a rule might become obsolete.
But still, it leaves open what the standard or factors are to determine what technical effect or contribution is, especially when it is very simple to link any code or a set of software arrangements which has been explained to have some technical utility. As has been pointed out (here), the interpretation propounded in Ferid Allani and taken forward in Microsoft Technology Licensing is diluting the fine line the lawmakers had intended to draw with the inclusion of the word “per se” while also not shedding clarity on what that line means and where to draw it. In that process, the line is at risk of being erased by judicial pronouncement.