Delhi High Court and Indian Patent Office clash over novel hardware features requirement

In Raytheon Company v Controller General of Patents and Designs (2023:DHC:6673), the Delhi High Court has set aside a patent refusal that was based on Section 3(k) of the Patents Act for being related to a computer programme per se or algorithm. 

Application background

The patent application was titled “Scheduling in a High-Performance Computing System” and was intended for high-performance computing systems (HPCs) that scientists and engineers use for modelling, simulating and analysing complex physical or algorithmic phenomena. The applicant highlighted before the court that a typical HPC machine design consists of numerous HPC clusters, the scalability of which was a problem in prior art due to constraints created by lack of sufficient bandwidth and the presence of unnecessary components that reduce a HPC system’s reliability. According to the applicant, the claimed invention addressed these problems by disclosing a method for scheduling that reduces the time requirements associated with scheduling a job for execution in a HPC system, resulting in minimised computational demands.   

During prosecution, the Indian Patent Office (IPO) refused the application under Section 3(k) of the Patents Act, reasoning that its claims did not outline novel hardware features. Surprisingly, the IPO relied on the 2016 Computer Related Inventions Examination Guidelines – even though these were updated in 2017 – which required that hardware features be incorporated for applications related to computer-related inventions. The IPO concluded that the invention was related to algorithmic and computational operations, and therefore its contribution was solely in software and the claims lacked hardware features.

Delhi High Court’s ruling

On appeal, after analysing the invention involved in the patent application, the court disagreed with the IPO’s position. It reaffirmed its judgments from Ferid Allani and Microsoft Technology Licensing and ruled that in cases of computer-related inventions, the technical contribution or effect that the invention generates is what needs to be examined.  The court opined that the requirement of including novel hardware features in claims has no basis in law. It also pointed out that the 2017 version of the guidelines do not impose any such requirement and were in force when the application hearing was conducted. In fact, the 2017 guidelines insist that in examination of computer-related inventions, the examiner’s focus should be on the substance of the claims and not on form or presentation. 

The court set aside the IPO’s order and remanded the matter back to the office for fresh examination with a direction that the IPO should not insist on a novel hardware requirement.