The question considered in Thaler vs. Vidal,
No.21-2347 (Fed.Cir.) by the U.S.
Court of Appeals for the Federal Circuit was about the patentabiity of AI
Software (Artificial Intelligence Software) as an inventor. The Delhi High Court
touched upon this aspect in its Writ Petition 7/2014 and decided on 12 December
2019 in the case of Ferid Allani vs. Union of India.
In the U.S. case (aforementioned) two patent applications where an AI system
was listed as the sole inventor were refused by the U.S. Patent and Trademark
Office (USPTO). The USPTO found that both applications were incomplete because
they lacked a valid inventor. According to the USPTO, the U.S. Patent Act
limit[s] inventorship to natural persons. Dr. Stephen Thaler, who filed the
patents on behalf of his AI system, filed a series of appeals until the case
reached the Federal Circuit.
On appeal, the Court affirmed the district court's holding that an AI could not
be listed as an inventor on a patent application because the Patent Act requires
that inventors must be natural persons. The Federal Circuit agreed with the
USPTO's conclusion that the Patent Act expressly provides that inventors must be
individuals. Because the Patent Act itself does not define the word individual,
the Federal Circuit relied on the U.S. Supreme Court precedent in Mohamad v.
., 566 U.S. 449 (2012), which explained that when used [a]s a
noun, 'individual' ordinarily means a human being, a person.
The Federal Circuit
also relied on definitions from the Oxford English Dictionary, Dictionary.com,
the Dictionary Act and the Federal Circuit's own precedent in Univ. of Utah v.
Max-Planck-Gesellschaft zur Forderung der Wissenschaften E.V., 734 F.3d 1315
(Fed. Cir. 2013), which held that inventors must be natural persons and cannot
be corporations or sovereigns."[i]
Thaler argued in this case that inventor in so far as Patent Act (U.S. Patent
Act) includes non-human entities. He also contended that AI should be patentable
in order to encourage innovation, public disclosure, progress of science and the
useful arts. The Federal circuit rejected these contentions on the ground that
these arguments are not persuasive in the light of the provisions of the U.S.
Patent Act. When a reference was made about South Africa granted patents to AI
as an inventor, the Federal Court opined that South Africa did not make the
decision based on U.S. Patent Act.
In India the Computer software is given intellectual protection both by way of
Copyright and also by Patents. Copyright is the preferred method in protecting a
software programme and patent requires fulfilment of stringent criteria imposed
by the Indian Patent Laws. Comparatively, the software under copright has lesser
protention than the software under the patents.
Ferid Allani vs. Union of India
A provisional application for patent of a computer program was filed by a
Tunisian citizen named Ferrid Allani (hereinafter referred to as petitioner) on
17th July 2002. On 21-02-2005, the FER, the first examination report was issued
by the Indian Patent Office recording objections as to lack of novelty and
patentability under Section 2 (1) (j) of the Patents Act. On 17-09-2005, the
petitioner in the case (Ferid Allani) filed his response to the First
A Second Examination report issued by the Patents Office, on
21st September 2005 again rejected the application on the grounds of
non-patentability under Section 3 (k) of the Act. No response was filed by the
petitioner to this second examination report as a result, the Patents office
office issued an Order of abandonment under Section 21 (1) of the Act, holding
that the petitioner's silence is deemed as abandonment under Section 21 (1) of
Petitioner challenged this Order by a Writ on 6th May, 2006 and the High Court
having heard the parties directed the Patents Office to consider a response on
Second Examination Report. Accordingly the petitioner submitted written
submissions to the Patents office however, the Controller refused the
application. In response to this refusal by the Controller an appeal was filed
before Intellectual Property Appellate Board (IPAB) by the petitioner and the
IPAB dismissed the application on the ground that the application did not
disclose any technical advancement or technical effect.
In order to qualify for a patent, an invention must satisfy three conditions
- Novelty i.e. newness. While examining the patent application, the
invention must answer the following question to fulfil the criteria of novelty. i.e. what
is new at the time of filing the patent application? Or what the inventor has
added to the existing human knowledge on the subject.
The invention must contain an inventive step which has not been anticipated
by a person skilled in the art.
- Capable of industrial application.
Further, the Patent Act provides an exhaustive list of subject matters under
section 3 which are not patentable.[ii]
The capability of the invention with respect to the industrial application is
requirement under Section 2(1)(j) of the Patents Act. The invention of the
petitioner was rejected in First Examination report on the ground that the
invention is incapable of Industrial application. Subsequently the application
was rejected in Second Examination report under the provisions of Section 3 (k)
of the Act, on the ground that the Computer Programme per se is not patentable.
The Controller of Patents office reject the invention claimed in the
petitioner's application on the following grounds:
Therefore method Claims as claimed in Claims 1-8 is a computer program and does
not constitute to be a patentable invention as defined in Sub-section k of Section 3 of
Patent Acts 1970. And Claimed invention in Claims 9-14 lacks Novelty as well as
Inventive steps as defined under section 2(1)(j) of the Patents Act1970. In view of my
aforesaid findings and circumstances of the case, I refuse to grant the patent on this
patent application No. IN/PCT/2002/00705/DEL."[iii]
The IPAB rejected the appeal made by the petitioner on the ground that the
invention did not reveal any Technical Advancement or Technical Effect as
required by the Guidelines for Examination of Computer Related Inventions (CRI)
issued by the Office of the Controller General of Patents, Designs and
The expression technical effect is defined under the abovementioned guidelines
to mean anyone or the combination of the following:
Technical Effect It is defined for the purpose of these guidelines as solution to a
technical problem, which the invention taken as a whole, tends to overcome.
general examples of technical effect are as follows:
- Higher speed
- Reduced hard-disk access time
- More economical use of memory
- More efficient data base search strategy
- More effective data compression techniques
- Improved use interface
- Better control of robotic arm
- Improved reception/transmission of a radio signal
Technical advancement is defined for the purpose of these guidelines as contribution
to the state of art in any field of technology. It is important to divide between software,
which has a technical outcome, and that which doesn't, while assessing technical
advance of the invention. Technical advancement comes with technical effect, but all
technical effects may or may not result in technical advancement. [iv]
The petitioner argued that the invention applied for patent has technical effect
in the sense that it allows the user to have better data base search strategies,
more economical use of memory and higher speed etc. He contended that the
invention is more than a mere software that is loaded onto the computer and the
application does disclose a technical effect and technical advancement.
In response to this the respondent (Union of India) argued that that the present
case does not call for any interference under Article 227 inasmuch as the IPAB,
which is a technical Tribunal has taken a view in the matter and in writ
jurisdiction, the Court is not to re-appreciate the technical arguments raised
before the Tribunal.
However, it is appreciable that the Delhi High Court went ahead in adjudicating
the matter without allowing itself to be inhibited by the consideration that it
is a technical matter already considered by a technical Tribunal, thereby
unfolding a new jurisprudence on the subject of patentability of the inventions
which were supported by Computer Programmes calling the rejections of such
applications on the ground that they violate Section 3 (k) of the Act is
The court rightly referred to the Report of the Joint Committee on
the Patents (Second Amendment) Bill, 1999 which stated that the words per se
inserted in Section 3 (k) are intended to facilitate the Patentability of
inventions ancillary thereto or developed thereon using computer programmes.
In other words, the Computer programmes per se (by themselves) are not
patentable but if they are used to invent certain other things, ancillary there
to or developed thereon, such inventions can be patented.
The following observations of Delhi High Court in the case are far more
progressive than those of the U.S. Court of Appeals in the case of Thaler vs.
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 todays 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[vi]
The above observations of the Delhi High Court will go a long way in paving the
way for creating a progressive indian jurisprudence in the field of Intellectual
Property Rights relating to inventions, technical advancements using Computer
programs and Artificial Intelligence applications.
The view that the inventor must be a natural person
is a regresssive view in view of the fact that a lot
of progress is possible because of the innovations, inventions and technical
advancements made by the inventions based on Computer programmes and Artificial
Though the inventor in such cases can not legally be called a
natural person, there is a person behind such invention who helped or
facilitated the process of these inventions by Computer programmes and AI
applications. Including such inventors as juristic persons within the ambit of
Copyright Act and Patents Act will promote the cause of fair disclosures by
those applying for the Copyrights and Patents.
Written By: Chandra Sekhar Anjuru
, Assistant Professor, Pendekanti Law
College, Chikkadpalli, Hyderabad