The Indian Patent Office (IPO) has recently released another set of guidelines (‘Revised Guidelines’) on how to deal with section 3(k) of the Patents Act, 1970 (as amended) (‘Act’) of India particularly clarifying examination of Computer Related Inventions (‘CRIs’) thereby overriding the previous guidelines published in February 2016, (‘Previous Guidelines’).
The patentability of CRIs and uncertain nature of law in this area has been a long debatable issue in many jurisdictions including India.
The relevant section 3(k) of the Act, which renders certain inventions as non-patentable, reads as follows:
“a mathematical or business method or a computer program per se or algorithms;”
The noteworthy features of Revised Guidelines are as follows:
– Removal of requirement of “novel hardware” to assess patentability of CRIs; and
– Doing away with the requirement of “contribution lying in both the computer program as well as hardware”.
Overview of the Revised Guidelines are discussed as under:
Inventions based on Computer programs “per se”
Section 3(k) of the Act renders inventions for “computer program per se” as non-patentable. The computer program may include certain other things, ancillary thereto or developed thereon. Hence, the intention of adding term “per se” was not to reject them for grant of patent if they are inventions.
The Revised Guidelines has not only completely done away with the criticized requirement of “novel hardware” but also done away with the requirement of “contribution lying in both the computer program as well as hardware” to assess patentability of CRIs under section 3(k) of the Act.
The requirement of “novel hardware”, raised in Previous Guidelines, was questionable as same appeared to be in contravention of order of the Intellectual Property Appellate Board (‘IPAB’) in Accenture’s case wherein the IPAB had questioned such requirement as same is neither mentioned in the Indian Patent Act nor in the Patent Office Manual or in guidelines by the Indian Courts. Also, the Delhi High Court’s order in Ericsson’s case held that in any invention which has a technical contribution or has a technical effect and is not merely a computer program per se is patentable.
The Revised Guidelines (in conformity with Previous Guidelines) proposes that patentability under section 3(k) of the Act is to be assessed based on the substance of the underlying invention rather than its form and such judgment should be reached by construing the claims as a whole. As per the guidelines, if any claim in any form such as method/process, apparatus/system/device, and / or computer program product/computer readable medium falls within any excluded category, the subject matter would not be patentable.
The clarity that claim construed as whole shall fall under excluded category to be denied as patentable, may amend approach of IPO that CRIs are not patentable unless the applicant can show patentability and raise objections merely because subject matter also covers computer programs.
In addition to form and substance test / analysis, the Revised Guidelines further provide broad categories of subject matter which would qualify as a computer program per se, and hence would not be patentable:
– Claims directed at computer programs / set of instructions / Routines and / or Sub-routines;
– Claims directed at “computer program products” / “Storage Medium having instructions” / “Database” / “Computer Memory with instructions” stored in a computer readable medium.
The changes under the Revised Guidelines appear to follow more liberal approach and should have substantial impact as to how the patentability for CRIs is to be assessed.
Inventions for Mathematical Methods
The Revised Guidelines have clarified that mere presence of a mathematical formula in a claim may not necessarily be a “mathematical method” claim. The Revised Guidelines further provide that the inventions may include mathematical formulae and result in system implementing technical process such as encoding, reducing noise in communications / electrical / electronic systems or encrypting / decrypting electronic communications, would be patentable and not be treated as mathematical methods.
This clarification is likely to reduce objections which were being raised for such inventions.
Inventions pertaining to Business Methods
The Revised Guidelines also touch upon inventions related to business methods and clarifies that the mere use of business related terms such as “enterprise”, “business”, “business rules”, “supply-chain”, “order”, “sales”, “transactions”, “commerce”, “payment” etc. in the specification or claims alone would not lead to the objection under non-patentability of business method.
The Revised Guidelines clarifies that if the subject matter of the invention essentially focuses on carrying out business/ trade/ financial activity/ transaction and/or a method of buying/selling goods through web (e.g. providing web service functionality), the same should be treated as business method thereby making it non-patentable.
Further, the Revised Guidelines clarify, if the claimed subject matter involves a specific apparatus or implements a technical process, then the subject matter will have to be examined as a whole. In such a case, if the substance of the invention does not relate to a business method then subject to patentability tests, it is likely that the subject matter under consideration may be patentable. Further, this clarification also finds its basis in the IPAB’s order of Yahoo vs. Controller, wherein the IPAB held the subject matter to be non-patentable as the “technical advance” of the claim fell within the excluded category of a business method.
Algorithm based Inventions
In absence of definition of term “algorithm” in the Act, the Revised Guidelines have relied on the Oxford dictionary meaning of the term, that is, “a set of rules that must be followed when solving a particular problem”.
The Revised Guidelines states that Algorithms in all forms including but not limited to, a set of rules or procedures or any sequence of steps or any method expressed by way of a finite list of defined instructions, whether for solving a problem or otherwise, and whether employing a logical, arithmetical or computational method, recursive or otherwise, are excluded from patentability.
To differentiate Computer programs claimed in the form of algorithms as method claims or system claims with some ‘means’ indicating the functions of flow charts or process steps, the Revised Guidelines have adopted form and substance test method.
The Revised Guidelines appears to be a step in positive direction. This should also lead to increase in filings of the CRIs and assist in clearance of backlog of examination of CRIs caused by lack clarity on present subject matter.
The Revised Guidelines appears to be a step in the positive direction. In conjunction with present positive step the IPO, in future, should also issue denial of patentability in cases involving section 3(k) of the Act with justification using a rule of reason analysis, rather than refusing the same as a category of excluded subject matter.
As a safeguard, the specification should be drafted and claimed in a manner which makes them an integral part of a larger process, apparatus and / or device, resulting in new product or increase the efficiency, to pass the test of Section 3(k) of the Act. Further, while drafting the claims in means plus function form structural features of means should be specifically disclosed in the specification.
About the Author
Ankush Mehta is Attorney-at-Law handling patents, trademark and design matters. He is working with the Firm since 2009 and completed his engineering in the domain of Electronics & Communication.
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