Kroll Information Assurance LLC v. The Controller General of Patents, Designs & Trademarks – Deep Analysis

Background of the Case

• Appellant: Kroll Information Assurance LLC (original applicant: Tiversa, Inc.)
• Respondent: Controller General of Patents, Designs and Trademarks
• 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”
• Priority Date: April 12, 2005 (US application)
• Filing Date in India: October 19, 2007 (National phase of PCT)

Timeline of Prosecution

• Publication u/s 11A: 04.07.2008
• FER Issued: 19.02.2013
• Response Filed: 22.10.2013
• Hearing Notice: 10.04.2019
• Hearing: 13.05.2019
• Written Submissions: 27.05.2019
• Controller’s Refusal: 25.06.2019

Grounds for Refusal by the Controller

1. Section 59 – Amendments go beyond original scope.
2. Section 2(1)(j) – Lack of inventive step over prior art D1.
3. Section 3(k) – Claims are mere algorithms/computer programmes per se.

Arguments by Kroll (Appellant)

• The amendments to claims were narrowing limitations, not expansions.
• The invention solves a technical problem—unauthorized data sharing in P2P networks.
• The system uses a combination of hardware and software, not a software-only invention.
• Prior art D1 is distinguishable—it relates to a client-server system, not peer-to-peer.
• Patent granted in major jurisdictions like US, China, Australia, and Japan.

Arguments by Respondent (Controller)

• The amendments introduce new matter not supported in original claims.
• The invention is essentially a computer-implemented algorithm and lacks technical effect.
• Search in P2P networks is routine and obvious.
• No evidence of technical advancement or inventive step over prior art D1.

Court’s Analysis

On Section 59 – Amendments

• Held in favor of Appellant:

1. Amendments (specifically sub-clauses iii & iv of Claim 1) narrowed the scope.
2. The new claim language explains rather than expands the invention.
3. Supported by the complete specification.
4. Controller’s findings set aside on this ground.

On Section 3(k) – Computer Program per se

• Held in favor of Respondent (Controller):

1. Claimed system merely uses generic hardware executing software instructions.
2. Main functionality: keyword-based search and profiling on P2P network—an abstract algorithmic process.
3. No technical effect or hardware advancement was demonstrated.
4. No integration with hardware that enhances or transforms the hardware functionality.
5. Relied on Lava, Microsoft, and Blackberry cases to reiterate that:

“Mere algorithmic instructions or abstract data processing without hardware transformation is not patentable.”

Court’s Final Verdict

• Rejection under Section 3(k) upheld.
• Controller’s decision affirmed, though Section 59 rejection was set aside.
• Appeal dismissed.

Key Takeaways from the Judgment

1. Permissibility of Claim Amendments under Section 59

• Ruling: The Court allowed the amendments in claims that narrowed the scope of the invention and were explanatory in nature, not broadening the original scope.
• Impact:

1. Encourages applicants to pursue claim amendments provided they are well-supported in the complete specification and fall within the disclosed matter.
2. Reinforces judicial consistency with the decision in Nippon A & L v. Controller of Patents regarding the interpretation of Section 59.

2. Strict Interpretation of Section 3(k): Computer Programs Per Se

• Ruling: The invention, despite implementation via hardware, was ultimately a sequence of instructions (algorithm) for keyword-based search in P2P networks, which lacked technical effect or hardware enhancement.
• Impact:

1. Reaffirms that mere software automation or abstract algorithms—even when combined with generic hardware—do not qualify as patentable inventions.
2. Supports the Patent Office’s practice of rejecting claims that are computer programs disguised as systems/methods without true technological innovation.

3. Need for Technical Advancement or Technical Effect

• Ruling: For a software-related invention to be patentable, it must:

1. Solve a technical problem, and
2. Demonstrate a technical effect or improvement in hardware performance.

• Impact:

1. Aligns with Indian and international jurisprudence (e.g., Lava, Microsoft, Blackberry), providing clear guidance that the invention should go beyond generic computing.
2. Reinforces that India’s stance is more conservative than jurisdictions like the US or EU, particularly in rejecting patents for data processing, search methods, or profiling systems unless tied to a technical solution.

4. No Weight to Foreign Grants

• Ruling: The grant of corresponding patents in the USA, China, Japan, and Australia was not persuasive.
• Impact:

1. Applicants cannot rely on foreign prosecution outcomes to argue in favor of patentability in India.
2. Reiterates that Indian patentability is governed by domestic statutory exclusions, especially Section 3(k), which is uniquely worded compared to global standards.

Implications for Software Patents in India

1. Algorithm-Based and Data Processing Claims Face a High Bar

• The court made it clear: keyword-based search, data categorization, or profiling techniques—even if innovative—are not patentable unless they show a hardware-level impact.
• Systems that merely identify information (e.g., military data, personal info leaks) using predefined logic are too abstract for patent protection.

2. Patentability Requires Hardware-Software Synergy

• The ruling distinguishes between:

1. Software implemented on generic hardware ➝ Not patentable.
2. Software that transforms hardware functionality ➝ May be patentable.

• Inventions must demonstrate how they alter, enhance, or transform the working of a device—not just execute logic.

3. Claim Drafting Needs a Strategic Shift

• Broad functional claims will be scrutinized as abstract or algorithmic.
• Applicants must:

1. Clearly articulate technical problems being solved.
2. Include specific hardware interactions.
3. Show technical effect using examples or experimental data.

4. Increasing Judicial Deference to CRI Guidelines

• This case, like Lava and Blackberry, directly quotes and relies on the 2017 CRI Guidelines.
• These Guidelines are becoming quasi-binding tools for courts and patent offices to evaluate software-related claims.

Comparative View: India vs Other Jurisdictions

Final Thoughts

The Kroll judgment adds to the evolving jurisprudence that sets a high bar for software patenting in India. It sends a strong signal that:

🗣️ “Innovation in logic or algorithms alone, no matter how useful, will not be rewarded with a patent unless it improves the underlying machine or system.”

This is a wake-up call for software and AI innovators in India:

• Draft claims with a technical character.
• Demonstrate measurable improvement over prior art.
• Avoid generic phrasing like “processor configured to” or “storage medium having instructions” without describing hardware impact.