Safiya Malik

The High Court of Madras Single Bench of Justice Senthilkumar Ramamoorthy allowed the appeal filed by Ab Initio Technology LLC against the Patent Office’s refusal of its patent application concerning a computer-implemented method for tracing data lineage. The Court directed that the application proceed to grant, holding that the invention satisfies the inventive step requirement under Section 2(1)(j) and does not fall within the exclusion for a computer programme per se under Section 3(k) of the Patents Act. The dispute pertained to objections on non-patentability, novelty, and inventive step, and the Court concluded that the claimed features provide a technical contribution adequate for patent protection.

The case arose from the rejection of a patent application filed by the appellant for an invention titled “Graphic Representations of Data Relationship.” The application, filed as a national phase entry from a PCT filing, sought protection for a method and system for generating data lineage diagrams using metadata items stored in a metadata management system. The First Examination Report issued in January 2018 raised objections under Section 2(1)(j) for lack of novelty and inventive step, under Section 3(k) for being a computer programme per se, and on grounds of insufficiency and lack of clarity. The appellant responded with amendments. Subsequent hearing notices reiterated objections under Sections 3(k), 3(n), and 2(1)(j). A hearing took place in January 2020, followed by further amended claims.

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The appellant argued that the invention addressed the technical problem of tracing flawed data items by enabling upstream and downstream data lineage detection through a diagram generator that queries metadata systems using configuration information sets. It was submitted that the invention provided technical contribution and technical effect, and was wrongly treated as a mere algorithm. It distinguished its invention from prior art D1 by asserting that D1 did not generate lineage diagrams across programmes and data using selection specifications mapped to predetermined metadata types.

The respondent maintained that the invention was non-technical, implemented through program instructions executed on general-purpose hardware, and therefore fell within the exclusion of Section 3(k). It also asserted that D1 anticipated or rendered obvious the claimed method of retrieving related entities and graphically presenting relationships.

The appellant filed a rejoinder disputing these findings and relied on judicial precedents concerning technical effect, inventive step analysis, and treatment of computer-related inventions. The appeal culminated in the Court’s finding that the claimed invention satisfied novelty and inventive step requirements and that the rejection order could not be sustained.

The Court noted that the patent application had been rejected for lack of patentability under Section 3(k) and for lack of novelty and inventive step under Section 2(1)(j). It extracted the Patent Office’s reasoning, recording that the Controller concluded that the subject matter of the claims “does not disclose any technical feature of data usage and data retrieval” and that the claims “represent a set of computer executable instructions on a general purpose computer/computing device” with “no specific hardware available in the claimed invention.” The impugned order further stated that the steps were “done with the help of computer programmes in terms of an algorithm” and therefore the invention fell within “computer algorithm” under Section 3(k).

In deciphering Section 3(k), the Court examined foreign jurisprudence for interpretive guidance. It referred to Article 52 of the EPC, noting that exclusions apply only “to the extent to which a European patent application…relates to such subject-matter or activities as such.” It observed similar language in the UK Patents Act, which states that excluded items prevent patentability only when claimed “as such.”

The Court discussed the four-step approach laid down in Aerotel and Macrossan, where one must construe the claims, identify the contribution, determine whether that contribution falls wholly within excluded matter, and consider whether it is technical. It referred to Gale’s Application, quoting the principle that “more is needed before one is outside the exclusion – as for instance a change in the speed with which the computer works.”

Turning to the invention, the Court reproduced the independent claims and observed that the claimed method involves receiving a request for a metadata item, retrieving configuration information sets consisting of multiple selection specifications associated with predetermined metadata types, querying a metadata management system using such specifications, and generating a data lineage diagram comprising nodes representing programmes and data, with edges representing lineage relationships. The Court noted that the invention presents a structured approach that links programmes and data using predetermined configurations.

In reviewing novelty and inventive step, the Court assessed the disclosures of D1 and found that D1 did not disclose retrieving configuration information sets composed of different selection specifications mapped to predetermined types, nor did it disclose generating lineage diagrams representing the relationship between programmes and data in the manner claimed. The Court observed that the Patent Office had not demonstrated how D1, alone or combined with common general knowledge, led to the claimed invention.

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The Court recorded that “the claimed invention satisfies the novelty and inventive step requirements under Section 2(1)(j). As a corollary, the impugned order cannot be sustained and is hereby set aside.”

The Court held that the novelty and inventive step objections under Section 2(1)(j) were untenable and concluded that “the claimed invention satisfies the novelty and inventive step requirements under Section 2(1)(j). As a corollary, the impugned order cannot be sustained and is hereby set aside.”

“(T)CMA(PT) No.58 of 2023 is allowed without any order as to costs by directing that Patent Application no.4693/CHENP/2010 shall proceed to grant on the basis of the last submitted claims.”

Advocates Representing The Parties

For the Appellant:
M/s. Vineet Rohilla & D. Subbin, for M/s. Remfry and Sagar

For the Respondents: Mr. S. Diwakar, Special Panel Counsel, assisted by Raj Kumar, Assistant Controller of Patents and Designs

Case Title: Ab Initio Technology LLC v. Controller of Patents & Designs
Neutral Citation: 2025: MHC:2579
Case Number: (T)CMA(PT) No.58 of 2023
Bench: Justice Senthilkumar Ramamoorthy