Summary
Kroll Information Assurance’s patent application for identifying users sharing sensitive data on peer-to-peer networks was refused by the Indian Patent Office and later upheld by the Delhi High Court. While the Court accepted the claim amendments under Section 59, it found the invention ineligible under Section 3(k), as it lacked any technical contribution beyond standard software functionality.
Patent Application: Locating Users on P2P networks
Kroll Information Assurance, LLC, a US-based entity, filed a national phase patent application in India for a system, method, and apparatus to locate users based on data they share on peer-to-peer (P2P) networks. The claimed invention used specific search terms to identify individuals sharing sensitive files, either unintentionally or with malicious intent.
The application faced multiple objections during examination, including lack of invention, obviousness, and exclusions under Sections 3(b) and 3(k). Although the applicant amended the claims and responded in writing, the Controller rejected the application on the grounds that the amended claims exceeded the permissible scope under Section 59, lacked inventive step, and were excluded under Section 3(k).
Kroll appealed to the Delhi High Court.
Issues before the Court
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- Were Kroll’s proposed claim amendments permissible under Section 59 of the Act?
- Did the claims amount to a non-patentable “computer program per se” or “algorithm” under Section 3(k)?
- Was the Controller correct in refusing the application on inventive step grounds under Section 2(1)(j)?
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Key Arguments
Kroll argued that:
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- The amendments narrowed the claim and were supported by the specification.
- The invention addressed a technical challenge in identifying unauthorized data sharing on peer-to-peer networks, combining software with hardware.
- Comparable patents were granted in other jurisdictions.
- Prior art D1 did not teach the key inventive feature – profiling users from responses on peer-to-peer networks.
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Controller contended that:
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- The amendments added new matter, exceeding Section 59.
- The claims were directed to routine software behavior, lacking technical effect.
- Prior art D1 made the claims obvious.
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Court’s Analysis
The Court first addressed the scope of the amendments. It held that the changes were explanatory and limiting, not expansive. As per the Court, the added features clarified how the search result correlated with user identity and behavior, and these were supported by the original disclosure and did not go beyond the scope of the invention. The Court therefore set aside the refusal under Section 59.
Turning to Section 3(k), the Court found that the invention relied entirely on known computing tools to perform a standard search on a peer-to-peer network. It concluded that the system used a series of instructions—software—that did not produce any hardware-specific technical advancement. The Court further noted that the invention’s output depended on user inputs and known search algorithms, and that it did not enhance the functionality of the computer system or address any technical problem beyond routine data retrieval. Consequently, the Court stated that the invention was a computer program per se, falling within the exclusion of Section 3(k).
Findings & Order
The Court upheld the Controller’s rejection of the application under Section 3(k). Although the amendment under Section 59 was found to be valid, the subject matter remained ineligible for patent protection. The Court did not rule on inventive step under Section 2(1)(j), having concluded that the claims were not patentable under Section 3(k).
Disclaimer
This case note has been prepared based on the author’s understanding, views, and conclusions. Opinions of others may differ.
Citation: Kroll Information Assurance, LLC v. Controller General of Patents, Designs and Trademarks, C.A.(COMM.IPD-PAT) 439/2022, Delhi High Court, decided on 1 July 2025. https://indiankanoon.org/doc/55578710/ (last visited 3 July 2025)
