The Delhi High Court has held that a computer-related invention which merely uses an algorithm to colour-code message recipients based on message address characteristics, in order to assist a sender in avoiding unintended recipients, does not become patentable unless it demonstrates a technical effect or technical contribution that improves the system’s functionality or provides a technical solution to a technical problem.
Where the alleged contribution is only a software-based, user-convenience or data-management measure, and the claimed advance is rendered obvious by the prior art, the application is liable to be refused under Sections 2(1)(j) and 3(k) of the Patents Act. Accordingly, the impugned refusal orders against Blackberry Limited were upheld, and no order as to costs was made.
A Single Judge Bench of Justice Tejas Karia observed that the invention pertains to handheld wireless communication devices and seeks to enable users to differentiate intended recipients in outgoing draft messages by colour-coding recipient names based on message address characteristics such as host name, domain name or organization. The stated objective was to help users on small-screen handheld devices quickly identify intended recipients and reduce the risk of sending messages to unintended persons. The specification also described the device architecture, including a display, keyboard, micro-processor and navigation tool such as a trackball.
On inventive step, the Bench recorded that the Controller had relied principally on prior arts D1 and D2, and also discussed D3 in the appellate analysis. D1 disclosed application of identifying styles to messages based on message attributes for categorisation; D2 disclosed a pre-send alert showing addressees so the sender could verify or modify recipients; and D3 disclosed visually distinguishable message formats for different users. The Bench accepted that in the subject application, colour coding was done through an algorithm using message address characteristics, whereas in D1 the algorithm used message attributes for categorisation. It held that, in light of D1 and D2 along with the teaching of D3, the present invention lacked inventive step and was obvious.
On Section 3(k) of the Patent Act, the Bench endorsed the Controller’s view that the claimed feature of differentiating between recipients and notifying the sender before sending was not of a technical nature. The Bench noted that the problem addressed by the invention was not related to the performance of existing hardware, and that the proposed solution only involved colour coding on the basis of message characteristics, with the hardware executing the algorithm in the same way as any other algorithm. It further held that the subject matter lay in software-implemented non-technical processes such as associating colour, accepting and examining message addresses, and displaying message information, and therefore amounted to a computer program per se or algorithm within Section 3(k).
The Bench significantly observed that a “technical problem” must be technical in nature and not person-dependent in the manner suggested by the subject application. It accepted the reasoning that an error in sending a message to the wrong recipient depends on the person sending the message and is therefore not, by itself, a technical problem. It also observed that even after implementation of the invention, user error could still persist, for example where multiple recipients have the same name and the user must remember different assigned colours.
Briefly, an appeal was filed under Section 117A of the Patents Act, 1970 by Blackberry Limited against orders of the Assistant Controller of Patents and Designs refusing Patent Application titled “COLOUR DIFFERENTIATING A PORTION OF A TEXT MESSAGE SHOWN IN A LISTING ON A HANDHELD COMMUNICATION DEVICE” under Section 15 of the Act. The application claimed priority from a European application dated Sep 21, 2007, which was filed in India on Aug 20, 2008, published on April 17, 2009, examined through a First Examination Report dated Sep 10, 2014, and was objected to on lack of novelty / inventiveness and under Section 3(k).
Appearances:
Advocates Pravin Anand, Ashutosh Upadhyaya and Sandeep Bhola, for the Appellant
Advocates P.S. Singh, Rajneesh Kr. Sharma, Minakshi Singh, Ashutosh Bharti and Shivangi Sharma, for the Respondent
