Is Section 3(k) losing its significance?

It wasn’t long back when section 3(k) defined as “A mathematical or business method or a computer programme per se or algorithms are not patentable” was under heavy discussions as regards the standards based on which patentability of a computer implemented invention alias software invention would be examined.

A computer implemented invention was defined as any invention the performance of which involves the use of computer, computer network or other programmable apparatus, or an invention one or more features which are realized wholly or partially by means of a computer programme/ programmes. Computer programmes, on the other hand, were defined as a set of instructions for controlling a sequence of operations of a data processing system. It closely resembles a mathematical method. It may be expressed in various forms e.g., a series of verbal statements, a flowchart, an algorithm, or other coded form and maybe presented in a form suitable for direct entry into a particular computer, or may require transcription into a different format (computer language). It may merely be written on paper or recorded on some machine readable medium such as magnetic tape or disc or optically scanned record, or it maybe permanently recorded in a control store forming part of a computer.

The bar for examining such computer implemented inventions was set on the extent to which an invention demonstrates technical effect, which in turn being a hairy term, was further assessed based on whether the patent specification discloses to have a tangible output or a significant effect on the hardware/firmware. A hardware implementation performing a novel function therefore was not rendered patentable if the particular hardware system is known or is obvious irrespective of the function performed. In summary, “software per se” was differentiated from “software having technical effect” through its technical application in the industry. A claim directed to a technical process which process is carried out under the control of a programme (whether by means of hardware or software), cannot be regarded as relating to a computer programme as such. In such a case, a software specification relating to and claiming a method of predicting fluctuations in stock market, being purely based on a mental algorithm, would not be held patentable and a software for running an actuator on the other hand would be rendered patentable.

Finally to set the background for the actual status of 3(k) as a bar for examining patentability, Indian Patent office manual has been setting and/or quoting Patent Applications such as 558/DELNP/2005 which being a pure computer implemented software application, was denied a patent in India. The question being raised is whether 3(k) is being correctly applied in India in view of some recently granted Patents. We shall look at the same through some below mentioned case studies from across Hi-Tech domain:

Case Study 1: The Patent Application 8/CHENP/2005 is granted (Indian Patent No. 221272 filed by RGA Technology Partners). The granted patent relates to a method and system for evaluating insurability of an applicant for insurance based on an interactive questionnaire given a server by access of a database. The first Independent claim of the specification states:

A computerized method of evaluating insurability of an applicant for insurance from a carrier, said method comprising:

defining processing rules to determine which questions in a comprehensive set of application questions are to be presented to the applicant for collecting underwriting information from the applicant and to determine an order of presentation of the questions, said processing rules being based on underwriting rules associated with the carrier for rendering a decision on the insurability of the applicant from the underwriting information collected from the applicant;

assigning an engine variable to one or more of the questions in the comprehensive set of application questions for use in matching underwriting information previously obtained from the applicant to minimize redundant responses from the applicant;

presenting an interactive questionnaire via a browser operating on a client computer, said questionnaire including one or more base questions and one or more detail questions selected from the comprehensive set of questions according to the processing rules and the assigned engine variables, said detail questions each being related to at least one of the base questions for collecting further information related to the respective base question;
receiving at a server communications from the client computer including the responses to the questions presented to the applicant in the questionnaire, said server and said client computer being coupled to a data communication network; and

rendering a contemporaneous decision on the insurability of the applicant based on the questionnaire and the responses thereto from the applicant.

It is obvious from the very analysis of the specification, that the subject matter claims and pertains to a sequence of steps being implemented purely by a computer implemented software application. The specification does not claim any tangible output from the software and ultimately yields a suitability of application to get the insurance based on a set of questions from the server and answers given thereto by the Applicant.

It is furthermore important to note the view of the concerned subject matter by the EPO, which too, like India, applies the technical effect test for a computer implemented subject matter. According to the corresponding EPO Application No. EP 03 76 0294 having International Classification as G06F17/60, claims 1-40 pertain to a matter that is excluded from patentability under article 52(2) and (3) EPC and formulated to merely specify commonplace features related to a technological implementation of such matter to such an extent that a meaningful search is not possible. The search report also states that “Any problem which are addressed do not appear to require a technical but an administrative i.e. business solution.” The question therefore is if the Patent Office has loosened the bars for testing applications under 3(k) and granting application to reduce the backlogs or is it an indication of India slowly following the path of US Patent Law and approaching towards Bliski like contentions.

Case Study 2: The Patent Application No. 552/CHE/2004 is granted (Indian Patent No. 228947 filed by Samsung India Software Operations Pvt. Ltd). The granted patent relates to a method for anonymous instant messaging between an originating client and the recipient using an Instant Messaging (IM) server. The first Independent claim of the specification discloses:

A method for anonymous instant messaging between an originating client and the recipient using an Instant Messaging (IM) server, the method comprising the steps of:

a) receiving the request for hiding its actual user ID for anonymous message delivery from the originating client and confirming back to the message request;

b) creating or substituting a volatile ID for the actual ID of the originating client;

c) delivering the message to the recipient and obtaining the confirmation from the recipient;

d) receiving a subsequent reply from the recipient which makes use of the said volatile ID for communication and confirming back to the recipient client;

e) resolving the volatile ID with the actual user ID; and

f) delivering the reply from the said recipient to the originating client with the actual user ID and obtaining the confirmation from the originating client.

As can be observed, the invention pertains to three entities namely an originating client, a recipient, and a server all of which are operatively connected so as to enable sending of messages from the originating client to the recipient. The disclosure completely fails to discuss any subject matter pertaining to an impact on the hardware and/or firmware and also fails to demonstrate any technical effect on the hardware or produce a tangible output. The disclosure was restricted to a messaging mechanism which is well known in the art and purely an incremental improvement at the software level rather than at the network level. Therefore the concerned subject matter does not embody a technical process, which exists outside the computer.

The moot question therefore lies in:

1. The precise basis on which Section 3(k) is being implemented and justification that can be given for demonstrating technical effect in such pure computer enabled implementation.
2. Whether inclusion of a few hardware elements in the independent claim or merely enabling software objects to interact with hardware elements, the new test of bringing in substantiating arguments to make the subject matter patentable.
3. Whether system claims are no longer suggested and preferred over method claims when it comes down to computer implemented inventions.
4. Whether 3(k) is just for namesake!!!

References:

1. iPairs (Indian Patent Information Retrieval System)

2. Europe Patent office website

About the Author: Mr. Tarun Khurana, Partner and Patent Attorney in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: [email protected].