[SpicyIP] - Why we should stop using the word ‘technical’

[Bharathwaj Ramakrishnan]

Thanks to Swaraj and Yogesh, conversations with whom on this very ‘technical’ topic served as an inspiration for this piece.

I know that the title sounds radical, but hear me out.

There has been a flurry of cases in recent times discussing the scope of Section 3(k). All of these cases have, at various instances, come up with different tests/formulations that have one thing in common: the word ‘technical’ appended to the front. This form of technicalism, or the utilisation of tests with the word ‘technical’ appended to the front, is seen as the key to the Section 3(k) puzzle. Yet, as has been discussed multiple times in this blog, either the word itself has evaded a concrete definition or has been given a broad, all-encompassing definition. But unfortunately, the technical tests and the associated technicalism have been a source of perennial confusion. Energy has been spent discussing/debating what it excludes and what it doesn’t. But in my view, with hindsight, it has unfortunately obscured some crucial details about the Section 3(k) jurisprudence. Hence, I argue in this post that we should omit the word ‘technical’ and the associated technicalism from our thought process when we think about or write about Section 3(k).

I will first lay out my core argument for why we should omit the word ‘technical’ and the associated technicalism from our thought process when we think about or write about Section 3(k). For the convenience of more interested readers, end the post with additional context and justifications for the core argument. 

Post Ferid Allani, the Section 3(k) jurisprudence has been marked by the twin phenomena of fragmentation and contraction. Contraction for our purposes simply means the reduction in scope of Section 3(k) and the subject matter that it de facto excludes. 

To fully understand its implications,  I propose that we should omit the usage of the word ‘technical’ and the associated ‘technicalism’ when thinking or talking about patents and Section 3(k). Such omission will bring clarity and help us accurately describe and understand what is happening with respect to Section 3(k).  

Once you have forced yourself mentally not to see the word ‘technical’ and the associated technicalism in the context of Section 3(k), two crucial insights dawn on us:  

First, it forces us to confront the fact that ‘technicalim’ and the word ‘technical’ act as a cover for a certain amount of ad hoc reasoning that Courts have to engage in to develop intermediary principle(s) that can translate the policy preference embodied in Section 3(k) and apply it to concrete factual situations. This need for ad-hoc reasoning is necessitated by the legislative structure of  Section 3(k) and the specific interpretive issues that emerge from it. Such interpretive issues have been a topic of discussion in this blog, and I have identified at least 4 such issues, which are further discussed at the end.  

Second, as discussed in this blog, the courts, following Ferid Allani, have through the exercise of ad-hoc reasoning and under the guise of technicalism, have consistently moved in the direction of contraction. Technicalism has allowed them to mask this tendency/inclination towards contraction and present it as if they are somehow preserving some semblance of balance in the interpretation of Section 3(k), when, in reality, no such balance exists. Once it has been clearly seen that the Court’s ad hoc reasoning is driving in the direction of contraction, it also enables us to explore possible reasons as to why the courts chose the path of contraction instead of, say, expansion. Was it some form of faith-based reasoning in the idea that granting patents promotes innovation, which is motivating the Court to drive towards contraction? (see here and here) Is it legal transplantation of principles and jurisprudence from other jurisdictions, where the threshold of patentability with respect to section 3(k) analogous provisions has been reduced to a formality?  
Finally, it helps us come to terms with what is happening. Section 3(k) is being reduced to a near formality. I use the word near formality to clarify that even under the existing regime, inventions and their features that bring forth the specific functions of the CRI have to be clearly, sufficiently and fully described by the patentee. If that is not done, it is possible, as was the case in Kroll v. Controller, that the Court might return a finding that the invention was directed towards an algorithm or its technical effect or its technical character is not clearly described/visible. This has also been borne out by the observation made by the Madras High Court in Ab initio v. Controller that a computer program product claim in itself would be barred. Thus, functions and the surrounding apparatus/hardware associated with a CRI application have to be clearly, fully and sufficiently described so as to allow the Court to treat such functions as having technical effect/contribution or further technical effect or even providing innovative technical advantage.  

This forces us to examine two additional issues. First is the intermediate principle(s) propounded by the Court and the resultant contraction they produce in line with the original legislative intent? (It most probably is not) Second, a more important question: what are the possible present and future policy impacts of the phenomenon of contraction, and finally, what would be the ideal set of intermediate principles at this juncture with respect to Section 3(k) and whether the drive towards fragmentation and contraction itself is ideal?  

Read on for more additional context:

For those who are not convinced by the above-mentioned thesis and require further justification and context, please continue reading. The rest of the post provides definitions for the terms used and additional support for the argument presented above. 

The Original Sin: 

The twin phenomenon of fragmentation and contraction that I had discussed above which is the hallmark of Section 3(k) jurisprudence post Ferid Allani is partly due to the legislative structure adopted by the Parliament in 2002, which first introduced Section 3(k) in its current form with the word ‘per se’ attached to the term  ‘computer programme’ based on the recommendation of the Joint Parliamentary Committee (JPC). Attempts to clarify this section by adding additional language, such as  “technical application to industry or a combination with hardware,” that would have reduced the scope of exclusion with respect to computer programmes, were stymied. 

Thus, the parliament, by adopting Section 3(k) in its current form, provided the judiciary with a free rein to develop intermediate principle(s) that would translate and apply the policy preference as embodied in Section 3(k) to concrete cases. As to whether that was what was really intended, one is unsure, but with hindsight, it is safe to say that the Section itself, in its bare form, does not help one to decide whether an invention is barred by Section 3(k) and hence intermediate principles have to developed to give effect to the policy preference as embodied and expressed by Section 3(k) when faced with concrete cases.    

Section 3(k), due to its structure and language, raises four interpretive issues (with hindsight) for the Courts:

They must decide the extent to which inventions embodying elements that, in themselves, would constitute computer programmes are barred and in what contexts. Second, the scope of protection that would be granted to inventions which predominantly contain elements that would in themselves be treated as computer programmes. Third, whether inventions, which would include mathematical and business methods when they are computer-implemented, are automatically barred. Fourth, the distinction between computer programmes and algorithms.    

Technicalism became the key to resolving all these issues and served as the intermediary principles that translated and applied the policy preferences expressed in Section 3(k) to concrete facts.  

Technicalism, for our purposes, can be defined as the tendency of the Court to devise various tests or verbal formulations with the word ‘technical’ appended to the front to help resolve the four interpretive issues that emerge from the structure of Section 3(k).  

Thus, you have technical effect, technical contribution, further technical effect, innovative technical advantage and technical implementation, which have been used by courts at various instances to decide whether an invention is barred by Section 3(k).  

The Trend of Contraction Defined and Justified:

The jurisprudence surrounding Section 3(k) post-Ferid Allani can be characterised as moving in two directions:  

Fragmentation and Contraction. The drive towards fragmentation has been extensively documented by us. As to contraction, it has not been discussed in clear terms.   

Contraction for our purposes is the phenomenon where there is a reduction in the scope of subject matter excluded by Section 3(k). This contraction is a function of how the Courts interpret Section 3(k) and devise a set of intermediary principle(s) to resolve the four interpretive issues that emerge in the context of concrete cases.  

This drive towards contraction is visible in many ways, first is the abandonment of the position held by the IPAB in Yahoo v. Controller by the post-Ferid Allani Courts, which advanced a conjoint reading of Section 3(k) and 2(1)(ja), concluding that the in light of prior art, the technical advance or the delta/difference cannot arise from an excluded subject matter (relatively a more stricter test). Second, there is the expansion of per se treatment to all excluded categories in Ericsson v. Lava, which provides a broad catch-all definition of what constitutes a further technical effect. Third, allowing computer-implemented business methods to be patented. Fourth, providing a definition of the word ‘technical’ that is functionally empty, thus including everything and excluding nothing. Finally, Courts, in some instances, have engaged in policy-based reasoning and further advocating for a further push towards contraction (see here and here).  

These five developments collectively indicate a trend towards a de facto regime for CRI where Section 3(k) fails to act as a standalone substantive objection, reducing itself to a near formality. Thus, even though Section 3(k) on paper clearly states that a certain set of subject matters is excluded from patentability, they are not, as you would have realised by now,'technically' barred from being patentable.  

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