Court criticizes Patent Office for using outdated CRI Guidelines

This post discusses the order of 9th February 2024, in Microsoft Technology Licensing, LLC vs. Assistant Controller of Patents (O.A/SR.52/2021/PT/CHN), wherein the Madras High Court strongly held that the Patent Office had traveled backward in time by relying on the Computer Related Invention (CRI) guidelines of 2016, instead of the revised CRI guidelines framed in 2017 in evaluating Microsoft’s patent application in the context of Section 3(k) of the Patents Act, 1970.


The present appeal under Section 117A of the Patents Act, 1970, was filed by Microsoft Technology Licensing, LLC (the Appellant) against the order passed by the Assistant Controller of Patents and Designs (the Respondent) refusing the grant of the Appellant’s patent application, bearing the application number 7743/CHENP/2009, titled “Delegating Instant Messaging Sessions,” for falling under the purview of Section 3(k) of the Patents Act, 1970.

The Controller had refused Microsoft’s application stating that the programs in the Applicant’s invention “do not have further technical effect going beyond the ‘normal’ interactions between the program and the general-purpose hardware.”

Independent claim 1 of the invention:

  1. A system comprising at least one processor (1014) coupled to at least one machine-readable storage medium storing instructions executable by the at least one processor (1014) to implement:

a delegation component (102) configured to automatically re-direct an instant messaging communication (106) from an entity intended for receipt of the instant messaging communication to a delegate, based on a rule (102);

a continuation component (208) configured to continue or restart the instant messaging communication with the entity;

a log component (204) configured to:

monitor at least one of an approval to send the instant messaging communication to the delegate or a disapproval to send the instant messaging communication to the delegate, and correspondingly modify the rule to indicate a preference,

monitor a topic of the instant messaging communication, and

provide a logged summarization of a content, including the topic, of communications during the instant messaging communication; and

an extender component (206) configured to: 

apply the rule in at least one additional communication mode other than instant messaging, the at least one additional communication mode including at least one of email, voice, audio, voicemail or text messaging,

translate a forwarding rule associated with the at least one additional communication mode for application by the delegation component (102), and

automatically create the rule based on evaluating disparate data communication modes and identifying delegation and forwarding rules associated with the disparate data communication modes for emulating in the instant messaging communication.


The main issue to be decided by the Court was whether merely having novel software without novel hardware was sufficient to meet the criteria for exclusion in patentability under Section 3(k) of the Indian Patents Act, 1970.


The Court reiterated the judgments/rulings of Ferid Allani Vs Union of India and Ors. (W.P.(C) No.7/2014 and CM Appl.40736/2019), Microsoft Technology Licensing, LLC vs. the Assistant Controller of Patents and Designs [2023:DHC:3342], and HTC Europe Co Ltd. Vs Apple Inc. (A.Nos.A3/2012/2043 and 2044) for analyzing the challenge to Computer Related Inventions (CRIs). The Court pointed out that, when dealing with CRIs, it was important to evaluate if there was any technical effect or a technical contribution involved in the invention, without considering any hardware.


The Court strongly condemned the Patent Office for missing the signposts and for traveling backward in time by referring to the CRI guidelines of 2016 instead of the revised CRI guidelines issued in 2017 which stated that a software itself can be patented on its own strength, if it has a technical effect or a technical contribution.


The court allowed the appeal and directed that the application to be handled by another Controller and disposed of as expeditiously as possible.

Case citation: Microsoft Technology Licensing LLC v. Assitant Controller of Patents and Designs, decided on 09.02.2024

Authored by Ms. Sowmya Murthy, Patents Team, BananaIP Counsels


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