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by Admin
12 December 2025 4:23 AM
“Indian Law Follows the EPO Approach—If a Computer-Implemented Invention Yields Technical Effect, It Is Patentable Even If No New Hardware Is Used” — In a landmark judgment Madras High Court held that software-enabled inventions which demonstrate technical contribution and solve a technical problem are not excluded from patentability under Section 3(k) of the Patents Act, 1970. Allowing the appeal filed by Ab Initio Technology LLC, a Delaware-based company, the Court directed that its patent application titled “Graphic Representations of Data Relationship” be proceeded to grant, overturning the Patent Office’s earlier rejection.
Justice Senthilkumar Ramamoorthy, sitting in the Intellectual Property Division, emphasized that the Indian position aligns with the European Patent Office (EPO) and not with the stricter UK approach, and that novelty or inventive step does not require custom hardware if the software achieves a real technical effect.
“The claimed invention uses algorithms and computer programs, but such use results in the technical contribution and effect of reducing query response time and enabling simultaneous ad-hoc querying of complex metadata relationships. These are not excluded under Section 3(k),” the Court held.
Patent Rejected for Being “Computer Programme per se”; Appeal Filed Under Section 117-A(2)
The matter arose out of the Controller of Patents’ rejection of Patent Application No. 4693/CHENP/2010 on July 13, 2020, under grounds of lack of novelty, inventive step [Section 2(1)(j)], and exclusion under Section 3(k) for being a “computer programme per se”.
The invention, originally filed as a PCT application with priority from a US patent dating back to 2008, pertained to a system and method for dynamically generating graphical representations of data lineage—showing relationships among data and programmes using metadata from different sources.
The Patent Office had concluded that the invention was no more than a set of executable instructions on a general-purpose computer, lacked novel hardware, and did not display technical motivation. Consequently, it was held to fall squarely under the exclusionary bar of Section 3(k).
Ab Initio Technology LLC challenged the rejection through (T)CMA (PT) No. 58 of 2023 before the Madras High Court under Section 117-A(2) of the Patents Act.
Is the Invention “Technical” or Just “Code”?
The central legal issue before the Court was whether the claimed software-based invention had sufficient “technical effect” or “technical contribution” to escape the exclusion under Section 3(k), which disallows “computer programme per se” from being patented in India.
The Court examined the claims and working of the invention in detail and found that the invention involved a diagram generator, a metadata querying interface, and configuration information sets, all working together to efficiently trace upstream and downstream data lineage across distributed systems. This process reduced manual querying, improved response time, and generated custom lineage diagrams.
“The claimed invention is not a simple data presentation tool. It retrieves and processes metadata through configurable selection specifications and iteratively identifies data relationships. This is a technical solution to a real-world technical problem,” the Court held.
It noted that such retrieval and query optimization in metadata management systems had already been recognized as technical tasks by the EPO and were not barred under Article 52 of the European Patent Convention, which closely parallels India’s Section 3(k).
“Technical Effect Must Be Assessed Based on Practical Impact, Not Mere Presence of Code”
The Court rejected the Patent Office’s assertion that the invention lacked technical motivation simply because it was implemented on a general-purpose computer:
“The mere use of algorithms or software does not automatically make an invention non-patentable. What matters is the technical outcome. In this case, there is clear technical effect—reduced response time, configurability, and automation of previously manual processes.”
Justice Ramamoorthy strongly disapproved of an over-reliance on the presence or absence of hardware, and instead, laid down that what matters is whether the invention contributes technically to the functioning of a computer system or solves a technical problem.
“Indian law, thus, does not adopt the UK’s rigid position requiring impact on computer architecture or external systems. Instead, Indian jurisprudence aligns with the EPO’s ‘technical effect’ standard,” the Court clarified.
Section 3(k): Madras High Court Reiterates the EPO-Aligned “Technical Contribution” Test
The judgment offered a comprehensive analysis of the interpretation of Section 3(k) by tracing:
The UK jurisprudence, particularly Aerotel, Symbian, and HTC v. Apple, which imposed a narrow interpretation excluding software unless it changed the internal working of the machine.
The EPO approach, notably from decisions T 1924/17 and T 697/17, which permit software patents if they involve technical considerations, especially in database and metadata management systems.
The Indian jurisprudence, including Ferid Allani, Lava International, Microsoft Licensing, and Agfa NV, which endorsed technical effect or contribution as the test.
The Court observed:
“To hold that the claimed invention is a mere computer programme would be to ignore its actual functioning and impact. It enables upstream/downstream metadata tracing dynamically using configuration sets, which is clearly technical.”
The Court further acknowledged the CRI Guidelines 2025, issued by the Indian Patent Office itself, which endorse technical implementations like efficient querying of databases and data lineage tracing as non-barred subject matter.
Section 2(1)(j): Prior Art D1 Did Not Disclose Data Lineage Tracing System; Novelty and Inventive Step Established
Addressing the Controller’s additional objection under Section 2(1)(j)—that the invention lacked novelty and inventive step in light of prior art D1—the Court meticulously compared the claims.
D1 was found to be concerned primarily with entity relationship management in enterprise data systems, using unified graphical representations of entities across hierarchies.
In contrast, the claimed invention:
Enabled graphical tracing of data lineage (how data is derived, modified, or used),
Involved configuration sets with selection specifications for querying metadata systems, and
Generated lineage diagrams of programmes and data through iterative query interactions.
The Court found that:
“D1’s focus is on entities and their relationships, whereas the claimed invention focuses on metadata items representing programmes and data, with the aim of lineage tracing—a different technical problem with different technical means and outcomes.”
“Even a person skilled in the art (PSITA), armed with D1 and common general knowledge, would not have arrived at the claimed invention without inventive ingenuity.”
Accordingly, the Court held that the invention met the standards of novelty and non-obviousness, and that the Controller’s reliance on D1 was misplaced.
Patent Rejection Set Aside; Application to Proceed to Grant
The Madras High Court concluded that all grounds of rejection—under Section 3(k) and Section 2(1)(j)—were unsustainable, and accordingly set aside the rejection order dated July 13, 2020.
“The claimed invention demonstrates technical effect and contribution, and is neither anticipated nor obvious in view of the prior art. Hence, it does not fall under the bar of Section 3(k), and satisfies Section 2(1)(j),” the Court ruled.
Patent Application No. 4693/CHENP/2010 was directed to proceed to grant based on the last submitted set of claims.
A Defining Precedent for Patentability of Software in India
This ruling is a major milestone in Indian patent jurisprudence on computer-related inventions. It cements the position that software-enabled inventions which solve technical problems or yield technical effects are not barred from patent protection merely because they are executed on a general-purpose computer.
Justice Ramamoorthy’s judgment signals that India is firmly aligned with the EPO’s balanced approach, moving away from the overly restrictive tests followed in the UK.
By recognizing metadata-based data lineage tracing as a technical solution to a practical problem, the Court has paved the way for a more nuanced, innovation-friendly interpretation of Section 3(k)—critical for the Indian tech sector.
Date of Decision: November 4, 2025
