On July 1, 2025, in Kroll Information Assurance, LLC v. The Controller General of Patents, Designs and Trademarks & Ors.1, the Delhi High Court upheld the refusal of a patent application under Section 3(k) of the Indian Patents Act, 1970, reaffirming that a mere sequence of instructions or abstract profiling logic is insufficient for patent grant—a tangible technical effect and transformation of hardware functionality are essential for patentability in India.
Facts of the Case
Patent application no. 8100/DELNP/2007 titled “A System, Method and Apparatus to locate at least one type of person, via a Peer to Peer Network” (hereinafter the “subject application”) was filed by TIVERSA, INC., and subsequently assigned to the present applicant, Kroll Information Assurance, LLC.
The Controller refused the application, holding that it lacked inventive step under Section 2(1)(ja) of the Act based on prior art D1: US2004230572, and that it was non-patentable under Section 3(k). Additionally, the amendments made in the claims were deemed to extend beyond the original scope in violation of Section 59.
Kroll appealed the refusal before the Delhi High Court.
Appellant’s Arguments
Kroll contended that the Controller erred in rejecting the proposed amendments under Section 59, arguing that the changes merely narrowed the claims and were supported by the complete specification.
It was further submitted that the invention addressed a technical challenge of inadvertent or unauthorized sharing of sensitive data on peer-to-peer networks due to user error, malware, or malicious intent. The claimed system allegedly created a secure environment by enabling detection and restriction of such sharing. Citing Lava International Ltd. v. Telefonaktiebolaget LM Ericsson2, the Appellant argued that the Controller failed to appreciate the claimed hardware-software integration and wrongly viewed the software in isolation, ignoring the technical effect.
On inventive step, Kroll argued that the cited prior art D1 operated in a client-server environment and did not teach locating a particular type of person or malicious users as claimed. D1 lacked any disclosure of using search terms to locate such users in a peer-to-peer network. The applicant also highlighted that the same invention had been granted in jurisdictions like the USA, China, Australia, and Japan.
Respondent’s Contentions
The Respondent argued that the refusal was correctly made under Sections 2(1)(j), 2(1)(ja), 3(k), and 59. It was submitted that the claimed invention merely implemented a computer algorithm for query processing in a peer-to-peer network, without solving a concrete technical problem or demonstrating a hardware-related technical effect. Thus, it rightly fell under Section 3(k).
It was also argued that the Appellant had failed to present a comparative analysis or evidence to establish how the invention overcame prior art or involved any inventive step.
Issues Before the Court
- Whether the amendments made in the claims violated Section 59;
- Whether the invention was non-patentable under Section 3(k);
- Whether the invention lacked inventive step under Section 2(1)(ja) in view of the cited prior art.
Court’s Findings
Issue 1- Amendments beyond the Scope of Invention under Section 59
The Court began by examining whether the Controller had correctly rejected the amended claims as being beyond the scope of the original disclosure. Relying on the precedent in Nippon A & L Inc. v. Controller of Patents3, the Court clarified that the test under Section 59 is whether the amended claims are “fairly based on the matter disclosed” in the complete specification.
The Court found that the amendments introduced by Kroll merely specified or clarified the nature of the information being retrieved, without adding any new subject matter. These were held to be limitations or explanatory features, rather than broadening amendments. Accordingly, the rejection under Section 59 was set aside
Issues 2 and 3 – Patentability under Section 3(k) and Inventiveness
The Court examined the invention which pertains to a system and method for identifying specific types of people or specific types of information on a peer-to-peer network. The system of the subject invention operates by using specific search terms to query the network, with the objective of profiling users or locating particular types of data based on the search results. The system also uses standard computing components such as a processor, memory, storage and conventional software to execute keyword-based searches across the peer-to-peer network.
Citing Ericsson v. Lava4, Microsoft v. Controller of Patents5 and Blackberry v. Controller of Patents6, the court affirmed that inventions solely directed towards algorithms or computer programs per se would not satisfy the test of patentability; however, if the algorithms are directed at enhancing the functionality of a system or hardware component, the effect or functionality derived by the system or hardware component is a patentable subject matter.
By applying the rationale of the CRI Guidelines along with the precedents, the Court concluded that the invention claimed in the subject application utilizes conventional and generic computer hardware components which implement the computer programme used to connect to the P2P network and issue searches, performing standard operations where a sequence of instructions is given by the user to achieve the desired result of profiling and finding the relevant information and users associated with the same.
The Court noted that the claimed invention is merely enabling a search within a P2P network which is being performed based on the keywords given by the user, which reflects conventional ‘computer programme’ behaviour. Therefore, it cannot be stated that the ‘computer programme’ is enhancing the functionality of the hardware. Furthermore, the profiling aspect of the invention, which uses keyword lists to search for specific types of users or data, is abstract in nature and lacks any technical character.
As a result, the Court concluded that the features claimed in Claims 1 to 7 fall under the category of ‘computer programme per se’, and Claims 8 to 10 fall under the category of ‘algorithms’. The Court held that the claimed invention is a mere sequence of instructions stored in hardware without solving any technical problem or offering any technical advancement to the hardware. Therefore, the claimed invention falls within the scope of Section 3(k) of the Act.
As the subject patent application did not meet the criteria of Section 3(k) of the Act, the Court did not examine the sustainability of the rejection under Section 2(1)(j) of the Act. Accordingly, the appeal was disposed of.
Our Analysis and Conclusion
This decision reaffirms the consistent jurisprudence from Blackberry (supra), Lava (supra), and Microsoft (supra) that a software-based invention must demonstrate a tangible technical effect on hardware to be patentable under Indian law. Merely implementing a profiling logic or keyword-based search over a peer-to-peer network—without improving hardware functionality—falls squarely within the exclusion under Section 3(k).
Foreign patent grants were not deemed persuasive. The judgment underscores the Indian Patent Office’s and Court’s emphasis on substance over form—patentability hinges not on claim labels but on the actual technical contribution.
Like earlier rulings, the Court has once again clarified that if the claimed invention consists only of policies or instructions without transforming underlying hardware behavior, it is not entitled to protection under Indian patent law.