MANU/DE/6290/2023

Equivalent/Neutral Citation: 2023/DHC /6673

IN THE HIGH COURT OF DELHI

C.A. (Comm. IPD-PAT) 121/2022
Decided On: 15.09.2023
Appellants: Raytheon Company Vs. Respondent: Controller General of Patents and
Designs
Hon'ble Judges/Coram:
Prathiba M. Singh, J.
Counsels:
For Appellant/Petitioner/Plaintiff: Vineet Rohilla and Tanveer Malhotra, Advocates
For Respondents/Defendant: Pratima N. Lakra, CGSC and Vanya Bajaj, Advocate
JUDGMENT
Prathiba M. Singh, J.
1. This hearing has been done through hybrid mode.
Brief Facts
2 . The present appeal was originally filed before the IPAB in the year 2020 and
transferred to this Court upon the enactment of the Tribunals Reforms Act, 2021. Vide
order sheet dated 14th September, 2020, notice was issued in this appeal in the
proceedings before the IPAB. Thereafter, notice has also been issued by this Court vide
order dated 23rd November, 2022.
3 . The present appeal, has been filed under Section 117A of the Patents Act, 1970
(hereinafter 'the Act') by the Appellant-Raytheon Company challenging the impugned
order dated 17th October, 2019 by which the Appellant's application for grant of a
patent has been refused by the ld. Assistant Controller of Patents and Designs
(hereinafter 'Controller') under Section 15 of the Act. The patent application of the
Appellant bearing application number 4075/DELNP/2007 titled 'Scheduling in a High-
Performance Computing System' (hereinafter 'subject patent') has been refused by the
ld. Assistant Controller of Patents and Designs under Section 15 of the Act.
4. The subject patent was filed before the Indian Patent Office on 30th May, 2007 as a
PCT national phase application with International Filing Date of 12th April, 2005,
claiming priority from a US Patent Application with the earliest priority date of 17th
November, 2004. The impugned order refused the grant of the subject patent on the
following grounds:
• Lack of inventive step; and
• Non-Patentability under Section 3(k) of the Act.
Submissions

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5 . Mr. Vineet Rohilla, ld. Counsel appearing for the Appellant submits that there is a
fundamental error in the impugned order i.e., that the ld. Controller has unfortunately
followed the outdated Computer Related Invention Guidelines (CRI) Guidelines of 2016,
dated 19th February, 2016, instead of the updated CRI Guidelines of 2017. The
Appellant has also filed a written note of arguments in support of its contention that the
subject patent application ought to be granted by this Court.
6 . The Appellant claims that the subject patent application relates to the domain of
High-Performance Computing (HPC), which is used by scientists and engineers for
modelling, simulating, and analysing complex physical or algorithmic phenomena. It is
averred by the Appellant that performance of HPC systems is chiefly determined by
parallel scalability which is often a limiting factor. Scalability itself is based on the
following factors:
• Hardware;
• Memory input/output (I/O), communication bandwidth;
• Software;
• Architecture;
• Applications.
7 . According to the Appellants, the problem to be solved by the subject patent
application is that in typical HPC setups, there are imbalances between processing,
memory, and I/O bandwidth which resultantly hinder scalability. Many HPC
environments lack sufficient I/O bandwidth for high-end data processing and often
include unnecessary components that reduce reliability. As per the Appellant, due to
these problems, many HPC environments may not be able to provide robust cluster
management software for efficient operation in product-oriented environments. It is the
case of the Appellant, that these problems are solved by the subject patent application.
8 . The Appellant claims that the subject patent application solves not only the
aforementioned problem but also the problems of the prior art. It is claimed that one of
the embodiments involves the use of an 'aggressive flag,' which sets a limit on hop
counts between a pair of nodes when a 'spatial request' is allocated as a 'compact
request' and allocates a compact combination of nodes to the request if the maximum
hop count falls within Specification is relied upon in support of this assertion. The
Appellant asserts that the subject patent application provides an advanced solution for a
'spatial request' to be allocated as a 'compact request' exclusively upon the assurance of
a specific level of performance. Hence, the subject patent application exhibits a
technical effect of reducing time requirements typically associated with scheduling a job
for execution at an HPC system.
9. In its written note of arguments, the Appellant has also claimed that the Respondent
has wrongfully refused the subject patent application without considering the
substantive arguments made by the Appellant to overcome the objection of lack of
inventive step. The Appellant has also asserted that the prior art documents cited by the
Controller do not disclose the features of the Independent Claim of the subject patent
application. The said inventive features of the subject patent application are listed
below.
"if the request is compact or if the request is spatial and (1) an aggressive flag

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 variable indicates that compact is acceptable and (2) the requested number of
nodes in the assumed spatial relationships between nodes is not possible".
10. With respect to the objection under Section 3(k) of the Act, the Appellant claims
that the Claims of the subject patent application provides a technical advancement and
technical contribution. The said Claims pertain to a technical method designed for
scheduling in a HPC system. Furthermore, it is claimed that these technical method
steps are made feasible through the incorporation of hardware components which are
detailed in the complete specification of the subject patent application. The hardware
components include nodes (processors), network host channel adapters, memory units,
controllers, HPC servers, disk farms, memory controller hubs, buses, and more. As per
the Appellant the inventive features of the subject patent application yield a reduction in
time typically associated with scheduling job execution in HPC systems and,
consequently, decreases computational demands. It is finally asserted that the subject
patent application covers a robust cluster management system that includes scalable
nodes which facilitate user job submissions, dynamic allocation of scalable nodes for
jobs, and automated job execution using the allocated nodes. Reliance is placed on the
following judgements in support of the contentions on Section 3(k) of the Act:
• Ferid Allani Vs Union of India & Ors., MANU/DE/4323/2019
• Microsoft Technology Licensing Vs. Assistant Controller Of Patents And
Designs, MANU/DE/3188/2023.
1 1 . Per contra, Ms. Pratima N Lakra, ld. CGSC submits that the Patent Office has
observed that since the Appellant's invention is primarily consisting of software and
there is no novel hardware along with the said software, the application is not liable to
be allowed. Ld. Counsel for the Respondent further argues that since the admitted
position is that the invention relates to computer program, in view of Section 3(k) of
the Act, the same is not liable to be granted.
1 2 . In the reply to the Appeal filed on 4th May, 2023, Mr. Piyush Garg, Assistant
Controller of Patents and Designs has claimed that the petition should be dismissed on
account of being vague and ambiguous. It is also averred in the said reply that the
appellant has not disclosed 'correct facts' regarding the 'process of approval of
applications for patent' and has put 'wrong allegations' on the respondent. It is further
alleged that the said 'wrong allegations' have been made by the Appellant for not
considering the subject patent applications.
13. Reliance has been made on prior art document D2, which is an IBM research report
of the year 1997 titled 'Job Scheduling in Multi-programmed Parallel Systems' authored
by Dror G. Feitelson, to maintain the refusal to the subject patent application. It is
highlighted by the ld. Controller that optimal usage of Input/Output bandwidths with
scheduling of jobs are not novel features and have been known the art.
14. It is underscored by the ld. Controller that the method and system used in the
subject patent application are generic in many algorithms and also contain
computationally intensive operations. As per the Controller, the due this factor, the
subject patent application is directed towards the implementation of an algorithm and
therefore, the objection under Section 3(k) of the Act is established and well-reasoned.
Analysis and Findings
15. The Court has heard ld. Counsels for the both the parties and perused the record.

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1 6 . High Performance Computing, which is the subject matter of the appeal in the
present case deals with the implementation of algorithms and also the software code
with the hardware they run on.1 HPC systems typically use many processors as part of a
single machine or several computers organized in a cluster and operating as a single
computing resource. HPC systems are said to perform at speeds more than one million
times faster than the fastest personal desktop, laptop or server systems.
17. In the present appeal, during oral submissions, the Appellant has submitted that
the primary challenge being pressed is on the aspect of the consideration of the wrong
guidelines for examination of Computer Related Inventions. The Appellant has
submitted that the present appeal is a fit case for remanding to the Controller for a
fresh consideration on the basis of the 2017 version of the CRI Guidelines. The relevant
portion of the impugned order is set out below:
"The present invention relates to "SCHEDULING IN A HIGH-PERFORMANCE
COMPUTING (HPC) SYSTEM" refers to all sorts of hardware devices that are
found in computer systems and in networks.
Pertinent Section of the statute:
The section 3(k) of Patents Act is quoted below for reference:
a mathematical or business method or a computer program per se or
algorithms.
The section proscribes patenting of matter falling under any of the categories
mentioned above.
Admittedly, the matter does not relate to a mathematical or business method or
algorithms.
However, whether it pertains to category titled computer program per se is an
inquiry which I would make in the light of the facts pertinent to this case.
In the recently published guidelines for examining the computer related
inventions, the test indicators to determine patentability are:
[1] Properly construe the claim and identify the actual contribution;
[2] If the contribution lies only in mathematical method, business
method or algorithm, deny the claim;
[3) If the contribution lies in the field of computer program, check
whether it is claimed in conjunction with a novel hardware and proceed
to other steps to determine patentability with respect to the invention.
The computer program in itself is never patentable. If the contribution
lies solely in the computer program, deny the claim. If the contribution
lies in both the computer program as well as hardware, proceed to
other steps of patentability.
xxx xxx xxx
From the above paragraph, it is clear that the actual contribution of the
invention solely lies in software and there is no specific hardware available in

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 the claimed invention."
18. A perusal of the above would clearly show that the guidelines which have been
taken into consideration for examining the application are the guidelines which were
issued by the Patent Office on 19th February, 2016. The relevant portion of the said
guidelines are set out below:
"Properly construe the claim and identify the actual contribution;
If the contribution lies only in mathematical method, business method or
algorithm, deny the claim;
If the contribution lies in the field of computer programmes, check whether it is
claimed in conjunction with novel hardware and proceed to other steps to
determine patentability with respect to the invention. The computer programme
in itself is never patentable. If the contribution lies solely in the computer
programme, deny the claim. If the contribution lies in both the computer
programme as well as hardware, proceed to other steps of patentability."
19. These guidelines were replaced in 2017 and the revised guidelines qua computer
programs is set out below:
4.5.4 Claims directed as "Computer Programme per se":
Claims which are directed towards computer programs per se are excluded from
patentability, like,
(i) Claims directed at computer programmes/set of
instructions/Routines and/or Sub-routines.
(ii) Claims directed at "computer programme products"/"Storage
Medium having instructions"/ "Database"/"Computer Memory with
instruction" stored in a computer readable medium.
The legislative intent to attach suffix per se to computer programme is evident
by the following view expressed by the Joint Parliamentary Committee while
introducing Patents (Amendments) Act, 2002:
"In the new proposed clause (k) the words ''per se" have been inserted.
This change has been proposed because sometimes the computer
programme may include certain other things, ancillary thereto or
developed thereon. The intention here is not to reject them for grant of
patent if they are inventions. However, the computer programmes as
such are not intended to be granted patent. This amendment has been
proposed to clarify the purpose."
20. Insofar as the novel hardware requirement is concerned, it is now well-settled that
the said requirement is not to be insisted upon in applications relating to inventions of
computer programs. The manner in which such applications are to be examined and the
interpretation of Section 3(k) is now settled by this Court in Ferid Allani (supra) and
Microsoft (supra). The relevant portions of the said judgments are set out below:
Ferid Allani Vs Union of India & Ors. MANU/DE/4323/2019
9 . A perusal of the Patent office website reveals that in respect of CRIs, the

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following guidelines have been issued:
i. Draft Guidelines for Examination of Computer Related Inventions,
ii. Guidelines for Examination of Computer Related Inventions, 2016
iii. Revised Guidelines for Examination of Computer Related Inventions,
2017
10. Moreover, Section 3(k) has a long legislative history and various judicial
decisions have also interpreted this provision. The bar on patenting is in
respect of 'computer programs per se....' and not all inventions based on
computer programs. In today's digital world, when most inventions are based
on computer programs, it would be retrograde to argue that all such inventions
would not be patentable. Innovation in the field of artificial intelligence,
blockchain technologies and other digital products would be based on computer
programs, however the same would not become non-patentable inventions-
simply for that reason. It is rare to see a product which is not based on a
computer program. Whether they are cars and other automobiles, microwave
ovens, washing machines, refrigerators, they all have some sort of computer
programs in-built in them. Thus, the effect that such programs produce
including in digital and electronic products is crucial in determining the test of
patentability.
10. Patent applications in these fields would have to be examined to see if they
result in a 'technical contribution'. The addition of the terms 'per se' in Section
3(k) was a conscious step and the Report of the Joint Committee on the Patents
(Second Amendment) Bill, 1999 specifically records the reasons for the addition
of this term in the final statute as under:
"In the new proposed clause (k) the words "per se" have been inserted.
This change has been proposed because sometime the computer
programme may include certain other things, ancillary thereto or
developed thereon. The intention here is not to reject them for grant of
patent if they are inventions. However, the computer programmes 'as
such' are not intended to be granted patent. The Page No. 2, Report of
the Joint Committee on the Patents (Second Amendment) Bill, 1999
(19th December, 2001) amendment has been proposed to clarify the
purpose."
A perusal of the above extract from the Report shows that Section 3 (k) which
was sought to be inserted by the Patents (Second Amendment) Bill, 1999
originally read as "a mathematical or business method or a computer program
or algorithms." "The words 'per se' were incorporated so as to ensure that
genuine inventions which are developed, based on computer programs are not
refused patents.
11. The use of 'per se' read along with above extract from the report suggests
that the legal position in India is similar to the EU which also has a similar
provision, Article 52 of the European Patent Convention, which reads as under:
"(2) The following in particular shall not be regarded as inventions
within the meaning of paragraph 1:

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 (a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing
games or doing business, and programs for computers;
(d) presentations of information.
(3) Paragraph 2 shall exclude the patentability of the subject-matter or
activities referred to therein only to the extent to which a European
patent application or European patent relates to such subject-matter or
activities as such."
Across the world, patent offices have tested patent applications in this field of
innovation, on the fulcrum of 'technical effect' and 'technical contribution'. If
the invention demonstrates a 'technical effect' or a 'technical contribution' it is
patentable even though it may be based on a computer program.
12. After hearing ld. counsels for the Parties, there is no doubt that this patent
application was filed in the Patent Office prior to the issuance of the guidelines
for Computer Related Inventions. Over the years, the Patent Office has
introduced various guidelines in respect of various technological subject matter,
in order to guide the examiners as to the settled case law by way of judicial
precedents and the legal position internationally. These guidelines do explain
the principles that have to be applied by the examiner, and are expected to
assist the examiner in dealing with applications, especially, those which involve
complex subject matter.
13. Insofar as Computer Related Inventions are concerned, there are three sets
of guidelines that have been published by the Patent Office. The initial
Guidelines are termed as "Draft Guidelines', the second document is described
as 'Guidelines' and the one issued in 2017 is termed 'Revised Guidelines'. While
the initial 2013 Draft Guidelines defines "technical effect", the said definition is
not to be found in the later guidelines. The meaning of 'technical effect' is no
longer in dispute owing to the development of judicial precedents and patent
office practices internationally and in India. There can be no doubt as to the
fact that the patent application deserves to be considered in the context of
settled judicial precedents which have now laid down the interpretation of
Section 3(k), the Guidelines and other material including the legislative
material.
Microsoft Technology Licensing Vs. Assistant Controller Of Patents And Designs
MANU/DE/3188/2023
Importance of signposts for evaluation of 'technical contribution' and 'technical
effect'
35. Section 3 outlines the categories of subject matter that are not considered
inventions under Patent law. Under this provision, sub-section (k) to Section 3
includes the phrase "[...] computer programmes per se". As a result, it is
necessary to differentiate this type of invention from those that incorporate or
utilize computer programs. To determine whether an invention falls within the
excluded categories, examiners must analyse the substance of the invention,

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 rather than focusing solely on the form of the claims. This requires looking
beyond the literal wording of the claims. The 2017 CRI guidelines, issued by
CGPDTM, acknowledges the challenges and complexities surrounding the
examination of CRIs. Clause 4.4.4 of the said guidelines underscores the need
to focus on substance rather than the form.
The said guidelines instruct patent examiners to focus on the underlying
technical contribution of the invention rather than its specific form or
presentation. The substance of claims is to be taken as a whole. This approach
for identifying the central idea ensures avoidance of grant of patents to the
excluded inventions which may be camouflaged. It also ensures that inventions
providing technical advancements and solutions to real-world problems are
adequately considered for patent protection, irrespective of the way they are
claimed or presented.
36. The concept of technical effect and contribution is crucial in determining
the patent eligibility of CRIs, but there is currently a lack of clarity in this area.
It is essential to identify and evaluate technical contributions in CRIs to
determine their eligibility for patent protection. The rapidly evolving nature of
technology means that what constitutes a technical effect or contribution may
become outdated in future. Therefore, there is a pressing need to clarify these
concepts in order to strike a balance between protecting the rights of inventors
and promoting the public interest and social welfare. Flexible and adaptive
approach would ensure patent protection to genuine technological innovations
while also preventing grant to overly broad patents that hinder innovation and
competition. Thus, establishing clear and consistent criteria and guidelines for
determining patentability of computer programs is essential to avoid ambiguity
and arbitrariness in the patent system. This can be achieved by providing
examples or illustrations of patentable and non-patentable computer programs.
In 2017 CRI guidelines, all examples describing eligible and ineligible patents
from the earlier guidelines have been removed. There are presently no
signposts for the examiners to navigate the field of examination of CRIs.
21. As can be seen from the above extracts in case of computer related inventions, the
patent office needs to examine if there is a technical contribution or as to what is the
technical effect generated by the invention as claimed. In the present case, it needs to
be examined as to whether the system sought to be patented reduces the time period in
scheduling job execution in HPC system. The requirement of novel hardware is a higher
standard which lacks any basis in law.
22. The novel hardware standard existed in the 2016 CRI Guidelines which have been
replaced by the 2017 CRI Guidelines. The patent office was in error by following the
inapplicable 2016 Guidelines. Accordingly, the impugned order is not sustainable and
the appeal is allowed. The impugned order is set aside. The subject patent application
of the Appellant shall now be examined afresh without insisting upon the novel
hardware requirement. Considering the time that has already lapsed since the filing of
the present patent application, it is directed that the application shall now be examined
within three months from the date of receipt of this order and appropriate orders shall
be passed by the Patent Office.
23. The Appellant is permitted to file updated Form-3. Let the Registry also transmit the
Electronic Record of the Court to the Patent Office.

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24. The Registry is directed to supply a copy of the present order to the office of the
Controller General of Patents, Designs & Trademarks of India on the e-mail-llc-
ipo@gov.in for compliance of this order. Ms. Pratima N Lakra, ld. CGSC to also
communicate the order to the Office of the CGPDTM and ensure compliance.

1 Hager, G. and Wellein, G., 2010. Introduction to high performance computing for
scientists and engineers. CRC Press.
© Manupatra Information Solutions Pvt. Ltd.

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