IPAB’s Ferid Allani Order and the Changed Indian Patent Landscape for Software Patents

We’re pleased to bring to you a guest post by our former blogger Rajiv Choudhry, analysing the recent IPAB order that set aside the Patent Office’s order rejecting a patent application for a computer related invention (titled ‘method and device for accessing information sources and services of the web’) after re-examining it pursuant to the direction issued by the Delhi High Court last year.  

Rajiv is a practicing advocate based in New Delhi. He specialises in IP law, with a focus on high – technology and patent law. His core IP interest areas are the intersection of technology and IP, Indian IP policy, innovation, and telecommunications patents. His previous posts on the blog can be viewed here, here and here.

IPAB’s Ferid Allani Order and the Changed Indian Patent Landscape for Software Patents

Rajiv Choudhry

Shortly before the term of a patent (if granted) would expire, in an ex-parte order authored by Justice Manmohan Singh, the IPAB finally granted a patent to Ferid Allani for an application filed almost two-decades ago for an invention relating to a ‘method and device for accessing information sources and services of the web.’

Brief Prosecution History of the Application – from Filing to Grant

Ferid Allani had an idea and filed a provisional patent application for it on 30.12.1999 in France and it was given the number 99/16704. Thereafter, a PCT application was filed on 29.12.2000 (PCT/FR2000/003759) and it entered India as IN/PCT/2002/00705/DEL on 17.07.2002.  As such, the term of the patent expires on 29.12.2020 (twenty years is the life of a patent). The IPAB granted the patent on 20.07.2020 (i.e. about 5 months before expiry).

Critique

Even though the order takes the pain to explain what the technical effect of the invention is, and the differences in the prior art cited, what is missed is whether the claims incorporate the features having the technical effect. Hence, the claims run afoul of section 10(1)(c) of the Patents Act – invention is limited in scope to the claims.

In my view, the patent claims are directed towards a structured search syntax generation and displaying corresponding results to user. A structured search syntax is user generated / based on user input logically created.  For example, sports —-› teams —-› merchandise if the search is for a merchandise only.

The judgement (Para 23.e) provides:

“e. Through the preliminary selection steps of the present invention, the query of the user is refined and narrowed down at each step so that the user is interactively made to target a particular and well-defined information and a website address is particularly generated locally (without using the internet bandwidth). Thereby, the user is taken directly to the said website, limiting the use of the bandwidth resource only once per search.”

About the Claim

The way I read the claim (the key feature is that it stores certain pages in a tree structure (like a directory and files within it), sends out a query based on user input and displays to the user results based on query and populates the display based on information so obtained.

The claim here does not mention how the internal directory structure is created.  It just says…beforehand locally stored within said communication device…This means that the user provides the necessary feedback to structure the query.

Compare this with the US and European claims:  both are narrower and include the invention.

US Claim (Granted)

EP Claim (Pending)

1. A method for accessing information- or service-providing web sites, from a mobile communication device connected through a communication network and provided with a display, comprising: a preliminary search for information or service, locally performed within said communication device in different themes and sub-themes within a plurality of successively displayed selection pages, said selection pages being organized in a structure of tree menu and beforehand locally stored within said communication device, each said selection page comprising a set of icons including one or more direct access icons for directly accessing an information- or service-providing web site and one or more selection icons for locally accessing and displaying another selection page within said structure of tree menu, wherein at least one of said selection pages comprises two or more direct access icons, and a step for emitting on the communication network, in response to a selection of a direct access icon in a selection page being currently displayed, an address of an information- or service-providing web site corresponding to said selected icon, said address being locally generated during the display and selection steps and directly accessing said information- or service-providing web site.

A method for accessing web-based information sources and services from mobile equipment connected via a communication network to the Internet, said mobile equipment comprising means for locally storing a set of organized selection pages at the within a menu tree structure and each containing a set of icons, characterized in that it comprises: a set of preliminary selection steps, including selection icon activations provided to access locally from a selection page to another selection page within said tree structure, until reaching in one of said selection pages a so-called direct access icon corresponding to a desired remote information source, a step for finally transmitting on the communication network, in response to an activation of said direct access icon thus reached, a complete address of access to said remote information source sought.

What is the Invention (from the specification)?

This part (about user choosing the tree) is simply stated as organized within the structure of a tree menu… and in my view should have been expanded to include this particular user input.

Second, I see this as a GUI (graphical user interface) to conduct a search which is itself optimized.  Of course, search optimization is not new, nor was new, in 1999 (before the priority date).  We had super computers which used time sharing concepts and had highly structured query systems for users to be able to make use (because time was a constraint, the problem had to be entered efficiently / optimized).

Consider an article of 1991, by I.V.Pottosin discussing ‘Analysis of Program optimization and further development’.  In the article the author notes that, ‘[F]or contemporary supercomputers, the requirement of the proper use of hardware peculiarities is added’ …in addition to… ‘saving computer resources such as time and memory’.   As such query optimization is well known in the art given that the cost of creating a software to run the supercomputer was almost equal to the hardware cost in the mid 1980s.

For more information, one may also see the interesting book by Russell C. McGee titled “My Adventures with Dwarfs: A personal history in mainframe computers”, available here, and on time-sharing of mainframes – The Origin of the VM/370 Time Sharing System by R.J. Creasy – available here.

If one sees the history of Graphical User Interface (GUI) (see Arstechnica article here), a search system like that of the operating system can be built using the GUI.  How does one search in the Windows / Linux / X-Windows / Apple GUI environments ? This was available in the 1990s to a person skilled in the art and whether it is obvious, is debatable.

But what is not debatable is that the key part of structuring the query is missing from the claim language.  This is where the invention resides and its absence in the claim is glaring.  In 1999 when the invention was made, the basic ingredients to reach the invention were there – search optimization to a query and GUI were both available – search optimization from decades of mainframe time sharing and GUI from the Windows system.

I have no doubt that the combination of search (for something on the web) with GUI was not there in 1999 but this aspect is missing in the claims.

Second, the Patent Office should have been clearer in its rejections – a two-page rejection for a matter that has travelled to both the IPAB and the High Court shows that it is somewhat different from other ordinary matters. Repeating a citation with the same rejection is a recipe for inviting trouble (for the Patent Office) – the least the Patent Office could have done at any point in the history of this application – is to at least have its cited references properly with specificity.  This should have not been left ambiguous.

Third, the Patent Office was not represented during the hearing at the IPAB.  Given that an expert body had already provided its views to the applicant multiple times – both before and after it went to the High Court and IPAB – the IPAB should have asked for written submissions from the Patent Office. This is even more important because the IPAB itself had rejected the patent application once before.

Further, given the IPAB had a different view – it should have heard the Patent Office – otherwise what stops any applicant going to the same forum and re-agitating the issue just because the bench composition is different.

There is no reasoning given by the IPAB on this aspect – what changed in the intervening period – that the application became patentable.

Other issues are highlighted as they appear in the post.

Journey of the Application

Patent Office  ‹—-› High Court ‹—-› IPAB ‹—-› High Court ‹—-› Patent Office

The arrows above are only indicative of the process followed by the application.  A request for examination for the patent application was filed on 19.11.2004 and the application was rejected by the Patent Office on 21.02.2005 on the grounds that the subject matter lacked an inventive step (Section 2(1)(j)) under EP0847019 (hereafter D1).

The Applicant then on 17.09.2005 replied to the First Examination Report (FER) arguing that the application was patentable.  Four days later, on 21.09.2005, the Patent Office again rejected the claims as being unpatentable under Section 3(k) of the Act.  No response was filed to the same and the application was deemed to be abandoned under Section 21(1) of the Act.

The Applicant then filed Writ Petition 6836 of 2006 challenging the order of abandonment on 2.05.2006.

The High Court of Delhi on 25.02.2008 directed the Patent Office to review the application by providing necessary opportunity of oral / written hearing.

The Applicant then filed a further response to the objection / rejection on 20.03.2008.  The agents appeared for the hearing and submitted written submissions on 12.08.2008.

A couple of months later on 18.11.2008, the Patent Office again refused the application.  An appeal against this refusal was filed before the IPAB on 20.02.2009 and the IPAB too dismissed this appeal.

Then an appeal against this IPAB rejection was filed before the Delhi High Court on 19.12.2013 and the High Court on 12.12.2019 disposed off the petition and directed the Patent Office to re-examine the patent application.

Then a hearing was held before the Patent Office on 27.01.2020 and on 07.02.2020 it once again refused the application under the same grounds that it lacks novelty, etc. under Section 3(k).

As already mentioned, the Patent Office should have been more clearer in its 2020 rejection and should have properly made out a case for rejection rather than repeat the content of the previous rejections.

That said, if one sees the delay – most of it is in courts – rather than before the Patent Office – so one really cannot point out the cause of delay as our Patent Office.

Analysis of the Patent by the IPAB (para 20 onwards)

The IPAB first discusses the state of art and the problem that was intended to be solved.  In para 23, it provides:

“23. As per appellant the present invention is that :-
a. As stated above, prior to the present invention, whenever a user wished to conduct a search over the internet, in response a high number of hyperlinks were returned and user had to make a choice again.

b. To overcome at least the said disadvantage(s), the present invention proposes to first extract clear and concise details of the information which the user is looking for, in a localized manner [i.e. on the user’s computer], before passing a well construed query to internet.

c. It is important to note that the access was only in relation to the address on the website and not to the data unlike the prior art document. 

d. The steps taken to extract the information on the user’s computer are called “preliminary selection steps”, which are implemented locally on the user’s computer itself, in order to avoid access to the web, unless necessary information for a well formed query is obtained from user.

e. Through the preliminary selection steps of the present invention, the query of the user is refined and narrowed down at each step so that the user is interactively made to target a particular and well-defined information and a website address is particularly generated locally (without using the internet bandwidth). Thereby, the user is taken directly to the said website, limiting the use of the bandwidth resource only once per search.”

Then in para 24, FIG. 1 of the application is reproduced with annotations (presumably provided by Applicant / agents).

“24. As in the present invention, the web site address is generated locally and passed on to a network for retrieving the required information /data and consuming the internet bandwidth only once, no bandwidth is assigned unless the user has provided sufficient information to take such user to the particular website address, therefore avoiding the unnecessary wastage of bandwidth.

Thus, essentially, the present invention delays emitting of a “final” request to the internet by locally implementing preliminary selection steps and using the said locally implemented selection to form a well-construed query (a locally formed website address) which is finally emitted to the Internet, thereby gaining the technical effects as detailed in the next section.”

Till here, the IPAB also structures the decision and identifies the key feature of the invention as essentially – forming a well-constructed query…emitted to the internet..

Given this background, the technical effect of reduction of bandwidth by a structured query is guaranteed.

“b. The technical solution provided by the present invention is to retrieve the detailed information about the result which the user is looking for, and thereafter taking the user directly to the desired internet resource (utilising the said detailed information) e.g. a website, rather than providing a list of results for user to choose from, therefore making it inconvenient for the user. As the user has accurately specified the resource required, the bandwidth so consumed is guaranteed to assure a successful result to the user.

c. Thus, the present invention delays emitting of a final request to the internet by locally implementing preliminary selection steps to form a well construed query, which is finally emitted to the internet.

d. The present invention drastically reduces the mean time duration for accessing the searched information, because the user does not spend time in selecting and reviewing multiple search results as returned by the other prevalent technologies in 1999. Therefore, the user gets the desired results without compromising on the relevancy and quality of results.

e. The present invention avoids the use of unnecessary bandwidth (for emitting a request on the internet) as the same is utilized only once per request, thereby saving the network resources. i.e. till the user has not provided sufficient details in the search request, no request is emitted to the internet and bandwidth is not consumed.

f. The present invention is also economical, as the internet bandwidth is consumed only once per search. Since, the present invention drastically reduces the use of bandwidth per user, it is likely to result in a decrease in network congestion, resulting in increased quality of internet service to the user.”

Para 27 of the decision discusses an example disclosed in the invention disclosure – but because it is not present in the claims it is kind of pointless in discussing it.  This is what should have been in the claim : i.e. this is the specific tree structure of icons as thought of by the inventor – and should have been claimed.  Because the current claims do not discuss this, they are overly broad.

Para 29 of the decision provides more details as regards the invention:

“29. The said findings are interpretations are not with the spirit of the order passed by the High Court. From the entire gamut of the matter, it appears to us that in view of previous invention, technical problem which the invention solves in the present application is that the present invention was a critical addition to the functionality of the internet in 1999, as the state of the art at the time, faced the following limitations –

a. Before the disclosure of the present invention, whenever a request was sent for accessing a particular information resource by a client / user, in response a high number of hyperlinks were returned and the client / user had to make a choice again, thereby making a constant to and fro. Repeated access was required to the internet and the connection to the internet had to be made multiple times, in order to derive the accurate result of the user’s query.

b. The technical problem which existed in the art prior to the present invention was that a typical user was made to use precious bandwidth even before the desired result was provided to the user.

c. Prior to this invention, a request for making a search was merely a generalized one which resulted in generation of multiple request-answer step(s) and such a delay corresponded for each such request for the information resource.

d. Such a delay corresponded to each request-answer step, which is emitted on the Internet. The existing art prior to the priority date of the invention, would immediately assign network resources in delivering a number of results to the user, even before the user could indicate whether the list of results so received are useful to it or not.

e. Allocation of network resources such as bandwidth, even before the user receives the desired results, resulting in jamming of network traffic, servers, and increase in the memory size of pages etc., and a corresponding delay in the search process, thereby making the search process long, tedious and uncertain. The said disadvantages increase manifold when multiple users would make use of the search process, as described above in points (a) to (d).

f. The search and navigation methodology being used in the art prior to the present invention was difficult to understand and non-intuitive, which created problems for users, who are unfamiliar with the system.”

Para 30 – 41 discuss that the Patent Office had not applied Indian but EU law as regards computer related inventions. Here, both Indian law (even if one considers the CRI guidelines issued by the Patent Office) or European Law, or for that matter even US or Japanese patent law – the basic principles are the same: one has to first construe the claims, then identify the contribution made, then determine whether it falls under any exclusion and finally to determine if there is any technical contribution.

Here, the Patent Office did exactly that – it found that claims as provided by the Applicant were not inventive – as they did not contain the key inventive step – of the creation of the tree structure and the query stopped. The Patent Office cannot be blamed if the applicant despite several opportunities does not bring the claim in line with the requirements.

Para 43 identifies that 19 ½ years have passed – but as identified earlier – the delay is not at the Patent Office’s end – but at the court’s end, either at the High Court or the IPAB.  In all about 12 years were passed just in courts – Patent Office took about 6 years including the time for filing of request for examination and about 1½ year in deciding multiple petitions filed by the Applicant.

In conclusion, this case will change the patent law landscape as it relates to software patents in India unless appealed. This is because courts now favour grant of patent applications for software.