New Guidelines for Computer Implmented Inventions. Are we still clear on what is Statutory?

It was on 8’th August 2013 that the Patent Office, based on feedback from numerous stakeholders, came out with yet another draft of guidelines on subject matters that relate to Computer-Implemented Inventions, interchangeably also referred to as Computer Related Inventions (CRI) hereinafter. The mandate of the instant article is not to assess or question the reasoning behind the defined statute or legislative history thereof, but instead to assume the validity of Section(k) and evaluate whether the new guidelines actually give clarity on what would be held statutory from a technology standpoint or whether it “almost” re-iterates the earlier manual guidelines and leaves it on the patent application, the Applicant, its Patent Agent/Attorney, and the Examiner to figure out the fate of the Application.

As a quick background, Section 3(k) was first introduced in Indian patent law by the Patent (Amendment) Act, 2002 and through the Patent (Amendment) Ordinance, 2004 prohibiting the grant of patents for: “a mathematical or business method or a computer program per se or algorithms”. Criticism on the subject of patentability of software inventions came focused on the phrase “per se” that is used in alliance with software inventions in the Indian Patent Act and ironically “per se” is still not defined in Indian statute, but the issued manual now directs to interpret the word per se as per its dictionary meaning. Patent practice Manual published by the Indian Patent Office (IPO) states (page 9) that “If the claimed subject matter in a patent application is only a computer program, it is considered as a computer program per se and hence not patentable. Claims directed at ‘computer program products’ are computer programs per se stored in a computer-readable medium and as such are not allowable. Even if the claims, inter alia, contain a subject matter which is not a computer program, it is examined whether such subject matter is sufficiently disclosed in the specification and forms an essential part of the invention.” The major question that loomed even after this clarification was whether the patentability would be assessed merely based on how the claim has been written or whether the underlying claimed technical subject matter would be taken into account to assess whether there are tangible output and the technical effect caused by the subject matter. In an instance, numerous illustrations of issued patents which relate to simple business methods such as for computing applicable tax, answering a dynamic questionnaire have been issued post the publication of the existing manual, where a simple amendment to the claims was made by the Applicant to remove the computer-readable medium (CRM) claims and get the issuance. Such a situation gave rise to a high priority issue of whether “how we write the claims” dictates if we get an issuance or whether the actual subject matter also makes a difference. I earnestly hope it does!!

Coming back to the recent draft guidelines, it has initially been rationalized that as subject matters relating to computer programs do not fall under the category of “manner of manufacture”, they are not held statutory. Furthermore, in addition to certain dictionary meanings of “per se”, “firmware”, and “hardware”, the draft highlights what constitutes a technical effect in 3.15, which includes the usual constituents of higher speed, reduced hard-disk access time, compression, but also highlights “improved user interface” as being an acceptable parameter for substantiating “technical effect”. To our understanding, improvement in user interfaces (UI), which includes, without limitation, graphical user interfaces, completely involve mere programming through a set of instructions which enhance the user feel, look, and experience of the underlying software/web application and does not necessarily require underlying hardware to enable improvement in the UI. Inclusion of such a criterion might later be relied upon by Applicants to secure patents on their improved user experience, which on the other hand, might well be a subject matter of copyright registration. According to Wikipedia, “graphical user interface (GUI, sometimes pronounced ‘gooey’)is a type of user interface that allows users to interact with electronic devices through graphical icons and visual indicators such as secondary notation, as opposed to text-based interfaces, typed command labels or text navigation.”

Section 3.16 also mentions that technological advancement would always result in technical effects, which again raises doubts as technological advancements have not been defined specifically. For instance, an application that relates to a method of booking a ticket online from one location to another, wherein the method claims significant shortening of time for the booking, may involve a technical advancement/means by forming and executing a dynamic query based on user profile and present location, but might still be rendered non-patentable as the method relates to a business method, which is excluded subject matter.

Subsequent to the above, the draft also highlights certain claims that may constitute a computer program per se. In view of the same, as also mentioned above, I wonder if its only the manner in which the claim is written that is being evaluated or even the subject matter in totality being assessed. To help illustrate, in Example 3 on page 14 of the draft, we see a claim that pertains to a method of detecting vulnerabilities in source code, in which method, the variables in the source code are analyzed to create models of arguments, which are further assessed along with pre-specified criteria to determine if vulnerabilities exist. Even though the above claim has been declared to be a computer program per se, I wonder what the fate of the claim would have been had it been reworded to limit the claimed algorithm to “detect whether the variables face memory allocation/deallocation vulnerability”, as detection of memory allocation/deallocation vulnerability can help optimize the performance of memory as a whole and hence may have fallen under 3’rd point of technical effect parameters mentioned in 3.15 (page 10) of the draft. I wish clarity could have been given on this aspect of wording in claim assessment vs. actual subject matter in context.

Although we do appreciate that all subject matters showing technical effect (and hence being statutory) might not necessarily result in technical advancement (3.16 of the draft), it sometimes becomes subjective to assess if mere inclusion of technical elements, which is believed to output a technical effect, should be held statutory. For instance, point 4.2, page 15 of the draft, gives an exemplary statutory claim, which upon a brief read relates to an apparatus for providing secure communication by receiving an access request from a device, sending the request to a web server, and reconfiguration of the device for authentication based on certain parameters. After going through the claim and segregating the individual elements, which have limitations of various constructional elements such as device, local web server, wireless network, reconfiguration module, I wonder if this aggregation of technical elements is all it takes to constitute a technical effect, as none of these elements, individually or collectively, do practically clearly indicate the actual novel technical feature of the claimed subject matter (which is also mentioned as a test in 5.4.6). For instance, the use of a packet traffic filter means and incorporation of a structural element for redirecting web requests before being directly sent to the wireless network have been known ever since web-request security measures have been implemented and companies such as Fortigate have been using such means from years. Moreover, it would have been much easier if the guideline the actual point in the claim that shows the technical effect, keeping in context 3.15. At the same time, subject matters which, for instance, relate to run-time processing of network packets by a gateway device to extract the application type of the packet and determine whether the packet is an attack packet or a valid packet, may have a technical effect by being run at a network layer of the OSI but may not result in a technical/hardware efficiency advancement per se, but makes the firewall software more proactive.

Furthermore, Section 5 of the manual mentions the basis of examination and particularly, in section 5.4 mentions grounds relating to technical advancement and technical effect. Sections 5.4.5 and 5.4.6 stress the importance of the presence of novel hardware in the claimed subject matter for it to be held statutory. However, the examination of numerous examples of issued patents, not only in India, but even in a similar regime based geographies such as EP, that it’s not necessarily the incorporation of novel hardware, but instead that the proposed technical effect of the claimed subject matter is that matter, which could well be without incorporation of new hardware. For instance, a method for storage of data in a particular sequence/manner in the same existing database may lead to enhanced technical effect by reducing the processing time of a given set of instructions, and hence the hardware responsible for the technical enhancement might not actually be new but instead, existing hardware can also be configured in a manner that makes it optimally and technically efficient. Moreover, it may not be about the hardware itself but instead about a novel computing architecture that configures instructions to be processed in a specific manner and sequence that creates a technically efficient solution. For instance, a multi-mode mobile wireless communications device architecture having an application layer, a services layer interfacing the applications layer, a multi-mode layer interfacing the service layer, and a hardware layer interfacing the multi-mode layer may not include any new change in hardware or any new hardware itself, but instead only the architecture of how different known pieces of hardware share/process data/instructions between themselves that is statutory.

Lastly, section 5-7 mentions exemplary cases giving decisions of the controller in such cases. Unfortunately, none of the cases actually raise confusion between what is statutory and what is not, as all the subject matters are fairly straightforward business methods having clear commercial intent and do not demonstrate any technical enhancement. It is actually the actual non-commercial based technology patents that raise the actual 3k issue. Page 43-46 of the manual does give a flowchart based on which an assessment of computer programs can be done but it is debatable if all the “OR” cases mentioned on Page 46 are actually exhaustive in nature and cover all possible non-statutory subject matter. Page 44 mentions, line with the EPO practice, to separate the claim into technical and non-technical features but then does not mention how extracted technical features should be further evaluated for patentability. Once it is determined that the subject matter relates to computer programs, it has been mentioned on Page 46 that it is checked as to whether the subject matter falls in any of the below-mentioned categories:

If the claims are directed to a set of instructions/routines (thereby excluding CRM claims)
If the claims are directed to CPP/Storage or Database Mediums
If the claims are directed to automation
If the claims do not include any structural features.

The question also lies as to whether it should be assumed that the above list is exhaustive and anything that does not fall within the above sphere would be statutory. Take for instance, below mentioned two ?? exemplary cases, which have been recently issued by IPO and take a call on whether they should have been rendered statutory:

160/MUM/2004 corresponding to 256583, wherein it was argued that the claimed subject matter is not a computer program per se as it involves a technical process focusing on changing the presentation of query results from a first format to another format using a configuration file. The scrutiny of the claims is self-explanatory and would not be deliberated being a matter of personal opinion.
1398/DELNP/2003corresponding to 256171 makes it hard to believe that 3(k) is strictly applied by the IPO to subject matters and instead it, by looking at prosecution histories, appears that it’s the type of claim (system gaining prominence over method) that makes a dent. Looking at the first issued claim, we do not even find the support of “transmitter” in the specification and find it difficult to get clear and convincing evidence of the technical effect of the instant subject matter. Going through the file titled “1398-DELNP-2003-Correspondence-Others-(19-01-2009).pdf”, makes me find it difficult to comprehend as to whether such a set of arguments are enough to get issuances.

About the Author: Mr. Tarun Khurana, Partner and Patent Attorney at Khurana & Khurana and can be reached at [email protected]