The Madras High Court recently allowed an appeal challenging the Patent Controller’s decision to refuse a patent application under Section 3(k) of the Patents Act, 1970, filed by Idemia Identity & Security France (hereinafter referred to as “Appellant”). The Court set aside the refusal order for being a non-speaking order and for violating principles of natural justice.
Background
The Appellant filed a patent application titled “Cryptography on a Simplified Elliptical Curve” with the Indian Patent Office bearing number 538/CHENP/2012 on 6th January 2012. The Controller refused the patent application, citing some portions from the CRI guidelines with respect to claims directed as “algorithm” and “mathematical method.” The refusal was based on the grounds that the claims were directed to a mathematical method, algorithm, and business method.
Appellant’s Arguments
The Appellant contended that the invention provided a technical contribution by masking the time taken for probabilistic insertion algorithms in cryptographic calculations, ensuring constant implementation time regardless of the message being processed. They further argued that the method addressed a technical problem and should not be classified as a mathematical formula or business method under Section 3(k) of the Patents Act, 1970. Referring to the Indian CRI Guidelines and European Guidelines for patent examination, the Appellant asserted that technical applications involving encryption and decryption systems were patentable when they demonstrated practical implementation.
The Appellant further stated that the impugned order was passed without proper consideration of these guidelines and also failed to notify the Appellant about the business method contention during the hearing, thereby violating principles of natural justice.
Court’s Analysis
The Court noted that the contentions of the Appellant were not considered and there was no reason given in the refusal order as to why the contentions of the Appellant had to be rejected by the Controller. While analyzing the issue, the Court referred to the 2002 amendment to Section 3(k) that introduced the term ‘per se,’ clarifying that computer programs are patentable if they demonstrate a technical advancement or economic significance.
Based on the above, the Court evaluated the Appellant’s invention by examining whether the technical contribution extended beyond a mathematical formula or algorithmic process and whether the invention demonstrated practical applicability as required under patent law.
The Court also considered the European Guidelines, which state that mathematical methods are patentable if they produce a technical effect serving a technical purpose, such as encryption systems, data encoding, and signal processing. Similarly, the Court referred to the Indian CRI Guidelines (2017), which clarify that mathematical methods and algorithms are not excluded from patentability if they solve practical problems and demonstrate technical advancement or economic significance. The Indian and European guidelines also specify that business methods are excluded unless the claims involve a technical process or apparatus.
The Court also observed that the Appellant’s invention provided a technical contribution through cryptographic processes that masked implementation time, thereby preventing timing attacks. Furthermore, the Court noted that the business method contention was not mentioned in the hearing notice, thereby violating principles of natural justice and depriving the Appellant of an opportunity to respond.
Conclusion and Decision
The appeal was accordingly allowed, and the Court remanded the matter for fresh consideration by a different officer. The Court also directed that the reconsideration shall take into account the observations in the judgment, allow any amendments within the complete specification framework, and issue a fresh order within six months from the date of receipt of a copy of the Court’s order.
Citation: Idemia Identity & Security France vs. The Controller General of Patents and Assistant Controller of Patents and Designs ((T) CMA (PT) No.198 of 2023 and (T) CMP (PT) No.21 of 2023). Available on https://indiankanoon.org/doc/69182521/
Authored by Dr. Sowmya Murthy, Patents Team, BananaIP Counsels
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