Case Name– Ferid Allani v Union of India & Ors.
Citation– 2019 SCC OnLine Del 11867
Court– Delhi High Court
Coram– Justice Pratibha M. Singh
Abstract
This commentary discusses the case of Ferid Allani v. Union of India (2019), which concerns whether computer-related inventions are patentable under Section 3(k) of the Patents Act, 1970. The case examined the role of technological effect or contribution of such an invention on its patentability. The Delhi High Court stated that Section 3(k) does not completely block software-based inventions and directed the Patent Office to re-examine the application in light of the new understandings. This case is important because it brings Indian law closer to an interpretation that is more suitable for a technology-friendly world. The commentary assesses the court’s rationale and underscores the absence of definitive criteria for evaluating technical effect, hence perpetuating potential inconsistencies in examination.
Introduction
Technology today is growing at a pace not known before. It is found in every corner of our daily lives, from homes to workplaces, and in everyday appliances. These technologies are controlled through their software, which is developed with the help of computer programmes. It is natural for creators and innovators of new technology to seek a patent for their creation. However, the plight of developing countries, such as India, is to strike a balance between granting individual protection and protecting the broader public interest. Ferid Allani v. Union of India is a landmark case in India that addresses the issue of patenting software inventions in the context of Section 3(k) of the Patents Act, 1970. Section 3(k) bars ‘mathematical or business methods or computer programmes per se or algorithms’ from patent protection. The jurisprudence of patents in computer-related inventions has been a complex and uneven landscape in India. The case marked a significant shift in the legal landscape of patenting such inventions, setting a precedent for future outcomes.
Facts of the case
Ferid Allani, a Tunisian Citizen, claimed ‘a method and device for accessing information sources and services on the web’ in his patent application. The invention improved how computers search databases and retrieve information from the web, making it essentially a computer-related invention. The improvement included higher speed, more economical use of memory and more efficient database search strategy. The patent application was filed in 2002, when the internet was still in its early stages of development. However, the Indian Patent Office rejected the claim, citing that the invention is essentially a computer programme and cannot be patented as per Section 3(k). After the patent office rejected the application twice, Ferid appealed to the Intellectual Property Appellate Board (IPAB) in 2005; however, the rejection was upheld on the ground that the claimed invention lacked any technical effect or technical contribution. He finally approached the Delhi High Court in 2013, and the case was decided in 2019, nearly 17 years after the original filing was made.
Issues
- The core issue was whether the claimed invention should be granted a patent in Indian law despite the invention being built on a computer programme, considering the prohibition under section 3(k).
- Whether the correct interpretation of the term ‘computer programme per se’ bars all computer-related inventions or only those lacking any technical effect or technical contribution.
- Whether the present invention has the required level of technical effect or technical contribution to qualify as a computer-related invention.
Reasoning
The court favoured the petition filed by Ferid. The court reasoned that section 3(k) bars a patent for ‘computer programmes per se’ and not all inventions built upon computer programmes. The court declared that interpreting the section as a blanket ban on all computer programmes would be retrograde in today’s digital world, where most inventions are based on it. It held that inventions should not be rejected simply because they are based on computer programmes.
Further, the court relied on the Joint Committee Report (the second amendment bill, 1999) for clarifying the legislative intent of the term ‘per se’. The committee reasoned the use of the term per se as – ‘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 term per se is included to ensure that genuine inventions are granted a patent.
Moreover, the Indian legal provision on computer-related inventions is closer to the European counterpart (Article 52 of the EPC). Article 52 and other patent offices across the world have tested the patentability of computer-related inventions through the lens of ‘technical effect’ and ‘technical contribution’. Therefore, the court ultimately ruled that if an invention demonstrates a technical effect or a technical contribution, it can be patented, even if it is based on a computer programme. Additionally, the court acknowledged that the 2016 and revised 2017 guidelines do not define ‘technical effect’ or ‘technical contribution’, as the 2013 guidelines do; however, their meaning is no longer disputed due to settled precedents and should be construed similarly.
Critique
The judgment was hailed as a landmark for computer-related inventions. However, it is not the best judgment that has been arrived at. The court was correct in interpreting that ‘per se’ was added for a purpose, and not to impose a blanket ban. Additionally, the technical effect and technical contribution test was a significant step in the right direction. But, like the newly published guidelines for computer-related inventions, they were not defined. Since the inception of section 3(k), there have been additions, deletions and reversals of the interpretation of the simple phrase ‘computer programmes per se’. Proposed amendments and multiple guidelines had been introduced, but none had settled the principle. However, when this judgment was arrived at, it was hoped that some, if not all, confusion would be cleared. It was again left up to the discretion of the examiners, leaving room for uneven handling. There were constant repetitions of the settled jurisprudence on these terms, but no direction as to what constitutes this jurisprudence.
The IPAB had rejected the application, citing the absence of a technical effect or technical contribution; however, the petitioner asserted that his invention discloses a technical effect or technical advancement as per the 2013 Draft guidelines. It wasn’t just a software program that was loaded onto the computer; rather, a specific method of implementation was required. But no reasoning was given as to whether the present invention actually disclosed such an effect or contribution. The application was directed to be re-examined without discussing these key points.
Since there is no definite description of the technical effect or technical contribution, it opens the possibility of an excessive grant of patents on fundamental software. This allows a few large corporations to own a monopoly over the inventions, harming small developers and start-ups. This also goes against the Indian policy, which prioritises innovation incentives for the larger public.
The court’s reasoning makes sense when read for a theoretical understanding as to why computer-related inventions should be allowed a patent in the Indian legal system. However, this reasoning is of no help if an objective criterion for determination is required.
Ultimately, the case has opened a doorway for patenting computer-related inventions, thereby progressing the debate, but it hasn’t addressed the consequences for the general public or the hardships that it can entail for examiners. Instead, this opportunity could have been utilised for laying down objective criteria or tests of determination.
Impact
The case marks a pivotal shift in how computer-related inventions are approached in India. the case establishes that inventions are patentable under section 3(k) if they demonstrate ‘technical effect’ or ‘technical contribution’, and are not to be denied simply because they use computer programmes. The patent offices across India now apply this principle for examining the applications. The case has had a significant influence on many subsequent cases, including Microsoft Technology Licensing LLC v. Assistant Controller (2023) and BlackBerry Ltd. v. Assistant Controller (2024), among others. It has also led to a significant rise in grant rates, from 10% prior to 2019 to over 30% by 2023. Despite the lack of objective parameters, it has had a generally positive effect so far.
Conclusion
The Ferid Allani case had a significant impact on how people in India perceive software patents. The Court said that Section 3(k) does not automatically preclude inventions that use computer programs. This means that a patent can protect computer-related inventions, especially those that have a technical effect or contribute to the field of technology. This was a good change in a field that had been unsettled for a long time.
But the decision didn’t answer all of the questions. It didn’t make it apparent what a technical effect or contribution is, so the examiner had to figure it out on their own. This could lead to inconsistent results until a more reliable test is developed. The ruling has moved Indian patent law in a positive direction, nevertheless, and laid the framework for further clarity in the future.
The case is a step forward, but it also reminds us that the path to a stable norm for software patents is still ongoing.
REFERENCES
Case law-
- Ferid Allani v Union of India & Ors. (2019) 2019 SCC OnLine Del 11867 Retrieved from https://indiankanoon.org/doc/1494959/
- Allani, F. v. Assistant Controller of Patents and Designs, OA/17/2020/PT/DEL (Intellectual Property Appellate Board). https://spicyip.com/wp-content/uploads/2020/08/Ferid-Allani-20.07.2020.pdf
Peer-Reviewed Academic Articles / Law Journal Articles
- Faham Ahmed Khan (JIPR)
Khan, F. A. (2024). Intellectual property rights for software, artificial intelligence and computer related inventions: A comparative analysis. Journal of Intellectual Property Rights, 29, 57-66. https://or.niscpr.res.in/index.php/JIPR/article/download/703/2263
- IJLRA Article
Imran Khan, Shrinithi S.G. (2025). Ferid Allani case analysis. International Journal for Legal Research & Analysis, 2(8). http://www.ijlra.com/uploads/968696175.pdf
Websites / Online Legal Blogs & Commentaries
- SpicyIP (January 2020) Nair, V. (2020, January 19). Looking at the Ferid Allani order on software patents. SpicyIP. https://spicyip.com/2020/01/ferid_allani_software_patents.html
- SpicyIP (August 2020) Sebastian, S. (2020, August 10). IPAB’s Ferid Allani order and the changed Indian patent landscape for software patents. SpicyIP. https://spicyip.com/2020/08/ipabs-ferid-allani-order-and-the-changed-indian-patent-landscape-for-software-patents.html
- IPWatchdog Ganguly, A. (2020, July 25). Curtain call for computer related inventions in India: Analysis of Ferid Allani case. IPWatchdog. https://ipwatchdog.com/2020/07/25/curtain-call-computer-related-inventions-india-analysis-ferid-allani-case/
- ZeusIP ZeusIP. (2024, August 6). Ferid Allani v. Union of India, WP(C) 7 of 2014 and legislative intent behind Section 3(k). ZeusIP. https://www.zeusip.com/article/patent-ferid-allani-v-union-of-india-wpc-7-of-2014-and-legislative-intent-behind-section-3k-of-th
- SCC Online Blog SCC Online. (2019, December 31). Del HC | ‘Technical contribution’ is the test of patentability for computer programs. SCC Online Blog. https://www.scconline.com/blog/post/2019/12/31/del-hc-technical-contribution-is-the-test-of-patentability-for-computer-programs
- Asia IP Asia IP. (2020, January 13). Not all computer related inventions are hit by Section 3(k) of the Patents Act. Asia IP. https://www.asiaiplaw.com/sector/patents/not-all-computer-related-inventions-are-hit-by-section-3k-of-the-patents-act
OPENING THE DOOR, BUT NOT DEFINING THE PATH
Komal Tiwari
Rajiv Gandhi School of Intellectual Property Law, IIT Kharagpur
Case Name– Ferid Allani v Union of India & Ors.
Citation– 2019 SCC OnLine Del 11867
Court– Delhi High Court
Coram– Justice Pratibha M. Singh
Abstract
This commentary discusses the case of Ferid Allani v. Union of India (2019), which concerns whether computer-related inventions are patentable under Section 3(k) of the Patents Act, 1970. The case examined the role of technological effect or contribution of such an invention on its patentability. The Delhi High Court stated that Section 3(k) does not completely block software-based inventions and directed the Patent Office to re-examine the application in light of the new understandings. This case is important because it brings Indian law closer to an interpretation that is more suitable for a technology-friendly world. The commentary assesses the court’s rationale and underscores the absence of definitive criteria for evaluating technical effect, hence perpetuating potential inconsistencies in examination.
Introduction
Technology today is growing at a pace not known before. It is found in every corner of our daily lives, from homes to workplaces, and in everyday appliances. These technologies are controlled through their software, which is developed with the help of computer programmes. It is natural for creators and innovators of new technology to seek a patent for their creation. However, the plight of developing countries, such as India, is to strike a balance between granting individual protection and protecting the broader public interest. Ferid Allani v. Union of India is a landmark case in India that addresses the issue of patenting software inventions in the context of Section 3(k) of the Patents Act, 1970. Section 3(k) bars ‘mathematical or business methods or computer programmes per se or algorithms’ from patent protection. The jurisprudence of patents in computer-related inventions has been a complex and uneven landscape in India. The case marked a significant shift in the legal landscape of patenting such inventions, setting a precedent for future outcomes.
Facts of the case
Ferid Allani, a Tunisian Citizen, claimed ‘a method and device for accessing information sources and services on the web’ in his patent application. The invention improved how computers search databases and retrieve information from the web, making it essentially a computer-related invention. The improvement included higher speed, more economical use of memory and more efficient database search strategy. The patent application was filed in 2002, when the internet was still in its early stages of development. However, the Indian Patent Office rejected the claim, citing that the invention is essentially a computer programme and cannot be patented as per Section 3(k). After the patent office rejected the application twice, Ferid appealed to the Intellectual Property Appellate Board (IPAB) in 2005; however, the rejection was upheld on the ground that the claimed invention lacked any technical effect or technical contribution. He finally approached the Delhi High Court in 2013, and the case was decided in 2019, nearly 17 years after the original filing was made.
Issues
Reasoning
The court favoured the petition filed by Ferid. The court reasoned that section 3(k) bars a patent for ‘computer programmes per se’ and not all inventions built upon computer programmes. The court declared that interpreting the section as a blanket ban on all computer programmes would be retrograde in today’s digital world, where most inventions are based on it. It held that inventions should not be rejected simply because they are based on computer programmes.
Further, the court relied on the Joint Committee Report (the second amendment bill, 1999) for clarifying the legislative intent of the term ‘per se’. The committee reasoned the use of the term per se as – ‘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 term per se is included to ensure that genuine inventions are granted a patent.
Moreover, the Indian legal provision on computer-related inventions is closer to the European counterpart (Article 52 of the EPC). Article 52 and other patent offices across the world have tested the patentability of computer-related inventions through the lens of ‘technical effect’ and ‘technical contribution’. Therefore, the court ultimately ruled that if an invention demonstrates a technical effect or a technical contribution, it can be patented, even if it is based on a computer programme. Additionally, the court acknowledged that the 2016 and revised 2017 guidelines do not define ‘technical effect’ or ‘technical contribution’, as the 2013 guidelines do; however, their meaning is no longer disputed due to settled precedents and should be construed similarly.
Critique
The judgment was hailed as a landmark for computer-related inventions. However, it is not the best judgment that has been arrived at. The court was correct in interpreting that ‘per se’ was added for a purpose, and not to impose a blanket ban. Additionally, the technical effect and technical contribution test was a significant step in the right direction. But, like the newly published guidelines for computer-related inventions, they were not defined. Since the inception of section 3(k), there have been additions, deletions and reversals of the interpretation of the simple phrase ‘computer programmes per se’. Proposed amendments and multiple guidelines had been introduced, but none had settled the principle. However, when this judgment was arrived at, it was hoped that some, if not all, confusion would be cleared. It was again left up to the discretion of the examiners, leaving room for uneven handling. There were constant repetitions of the settled jurisprudence on these terms, but no direction as to what constitutes this jurisprudence.
The IPAB had rejected the application, citing the absence of a technical effect or technical contribution; however, the petitioner asserted that his invention discloses a technical effect or technical advancement as per the 2013 Draft guidelines. It wasn’t just a software program that was loaded onto the computer; rather, a specific method of implementation was required. But no reasoning was given as to whether the present invention actually disclosed such an effect or contribution. The application was directed to be re-examined without discussing these key points.
Since there is no definite description of the technical effect or technical contribution, it opens the possibility of an excessive grant of patents on fundamental software. This allows a few large corporations to own a monopoly over the inventions, harming small developers and start-ups. This also goes against the Indian policy, which prioritises innovation incentives for the larger public.
The court’s reasoning makes sense when read for a theoretical understanding as to why computer-related inventions should be allowed a patent in the Indian legal system. However, this reasoning is of no help if an objective criterion for determination is required.
Ultimately, the case has opened a doorway for patenting computer-related inventions, thereby progressing the debate, but it hasn’t addressed the consequences for the general public or the hardships that it can entail for examiners. Instead, this opportunity could have been utilised for laying down objective criteria or tests of determination.
Impact
The case marks a pivotal shift in how computer-related inventions are approached in India. the case establishes that inventions are patentable under section 3(k) if they demonstrate ‘technical effect’ or ‘technical contribution’, and are not to be denied simply because they use computer programmes. The patent offices across India now apply this principle for examining the applications. The case has had a significant influence on many subsequent cases, including Microsoft Technology Licensing LLC v. Assistant Controller (2023) and BlackBerry Ltd. v. Assistant Controller (2024), among others. It has also led to a significant rise in grant rates, from 10% prior to 2019 to over 30% by 2023. Despite the lack of objective parameters, it has had a generally positive effect so far.
Conclusion
The Ferid Allani case had a significant impact on how people in India perceive software patents. The Court said that Section 3(k) does not automatically preclude inventions that use computer programs. This means that a patent can protect computer-related inventions, especially those that have a technical effect or contribute to the field of technology. This was a good change in a field that had been unsettled for a long time.
But the decision didn’t answer all of the questions. It didn’t make it apparent what a technical effect or contribution is, so the examiner had to figure it out on their own. This could lead to inconsistent results until a more reliable test is developed. The ruling has moved Indian patent law in a positive direction, nevertheless, and laid the framework for further clarity in the future.
The case is a step forward, but it also reminds us that the path to a stable norm for software patents is still ongoing.
REFERENCES
Case law-
Peer-Reviewed Academic Articles / Law Journal Articles
Khan, F. A. (2024). Intellectual property rights for software, artificial intelligence and computer related inventions: A comparative analysis. Journal of Intellectual Property Rights, 29, 57-66. https://or.niscpr.res.in/index.php/JIPR/article/download/703/2263
Imran Khan, Shrinithi S.G. (2025). Ferid Allani case analysis. International Journal for Legal Research & Analysis, 2(8). http://www.ijlra.com/uploads/968696175.pdf
Websites / Online Legal Blogs & Commentaries
Share Us On Socials
Other Recent Blog Posts
PROTECTED ON PAPER, POOR IN PRACTICE
Critically examines whether GI protection in India truly benefits farmers and artisans, analysing enforcement gaps, unequal value distribution, and limits of the GI Act 1999.
WHEN PROTECTION BECOMES A MONOPOLY
Explains trade dress protection in India, analysing Section 2(1)(zb), passing off principles, and growing concerns that packaging rights risk creating design monopolies.
WHEN YOUR FACE BECOMES MERCHANDISE
Explores India’s evolving personality rights framework amid deepfake misuse of celebrity likeness, analysing privacy, copyright, passing off, and urgent need for legislation.
FROM RICE PACKETS TO COURTROOMS
Analyses KRBL v Praveen Kumar Buyyani where the Delhi High Court held ‘Bharat Gate’ deceptively similar to ‘India Gate’, reinforcing idea infringement and initial interest
INDIA’S NOD TO A SCENT MARK: UNPACKING THE SUMITOMO BREAKTHROUGH
Explains India’s first accepted smell trademark filed by Sumitomo for rose-scented tyres, analysing graphical representation, distinctiveness, and sensory branding under trademark law.
PATENTABILITY OF COMPUTER-RELATED INVENTIONS IN INDIA
Explains how Indian law evolved from restricting software patents under Section 3(k) to recognising computer-related inventions demonstrating technical effect or contribution.