S.3(k) Patents Act | Delhi High Court Declines Patent To US-Entity For System To Locate Users Sharing 'Sensitive Content' On P2P Networks
The Delhi High Court has declined a plea moved by US-based Kroll Information Assurance, seeking to patent 'System to locate users via a Peer to Peer Network'.
Justice Amit Bansal cited Section 3(k) of the Patents Act 1970 which declares inventions related to 'algorithm' and 'computer program per se' as non-patentable. The bench observed,
“For a software or computer programme to qualify as an eligible subject matter under section 3(k) of the Act, it should be more than a mere sequence of instructions and should result in significant technical effect or advancement of the hardware.”
In the case at hand, Kroll claimed that the invention provides a system for identifying sensitive information and/or users inadvertently sharing such information on a peer-to-peer network, through profiling using specific search terms.
It claimed the invention achieves a technical effect by enabling a secure environment in peer-to-peer networks through identification and removal of sensitive content or restricting responsible users.
The Controller of Patents was of the view that apart from being excluded in view of Section 3(k), the application is non-inventive in light of prior art (D1).
Kroll claimed that D1 is concerned with a client-server network, which is different from a peer-to-peer network.
After examining the complete specification of the subject patent, the Court found that the invention claimed is merely enabling a search within a peer-to-peer network.
“The function of search is being performed based on the keywords given by the user, which reflects conventional 'computer programme' behaviour. Therefore, it cannot be stated that the 'computer programme'is enhancing the functionality of the hardware. Furthermore, the profiling aspect of the invention, which uses keyword lists to search for specific types of users or data, is abstract in nature and lacks any technical character.”
It relied on Microsoft Technology Licensing v. Controller of Patents & Designs (2024) where a coordinate bench had held that for a software invention to overcome the bar under Section 3(k) of the Act, it has to have a technical transformation that significantly enhances the hardware functionality.
Finding that the subject patent fails the test, the High Court refused to interfere with the Controller's order.
Appearance: Mr. Vineet Rohilla, Mr. Rohit Rangi, Mr. Tanveer Malhotra and Mr. Debashish Banerjee, Advocates for Appellant; Mr. Piyush Beriwal, Mr. Nikhil Kumar Chaubey and Ms. Jyotsna Vyas, Advocates with Mr. Praveen Kumar, Officer (through VC) for Respondents
Case title: Kroll Information Assurance LLC v. The Controller General Of Patents, Designs And Trademarks And Ors
Case no.: C.A.(COMM.IPD-PAT) 439/2022