Introduction The World Trade Organization (WTO), via the TRIPS agreement, has set out various governing…
The Indian Patent office (IPO) after considering inputs/suggestions/comments from different stakeholders on previously issued Guidelines for Examination of CRIs has reissued the final guideline on 19th Feb 2016. As per the reading of the guideline, CRIs comprise inventions that involve the use of computer, computer network or other programmable apparatus and include such inventions having one or more features of which are realized wholly or partially by means of a computer program or programmes.
CRIs are created with the help of intellectual contributions, and hence should appropriately be protected and deserve a strong protection. As we know, patent being the strongest form of IP protection, has always been sought after IP protection for CRIs. Patents granted in this field however have made several IT and software related companies suffer, and face the heat in form of patent litigation throughout the world. To restrain patent offices from granting frivolous patents, certain restrictions have been imposed on CRIs by different countries in attempt to maintain a good balance between domestic interest (of industry and public at large) and international obligations under TRIPs agreement. Similar restrictions have also been imposed in Indian Patent Act, through section 3(k), which excludes “mathematical or business methods or a computer programmes per se or algorithms” from being patentable subject matter. However, the term “per se” has been interpreted differently and CRIs have been a topic of debate for long time, especially in absence of litigation. Indian Courts haven’t got much opportunity to clear the cloud. The IPO has issued, at different times, guidelines for examination of CRIs with an attempt to provide a uniform manner in which claims related to the CRIs should be examined and issued. With the increasing volume of patent applications filed in the domain, it has become necessary for the patent regime to cope up with the challenges of processing patent applications in the field of computer related inventions and related technologies to insert few firm conditions within the guidelines for allowing such applications or inventions to be declared as novel and to get granted as patent by the IPO. More clarity is expected under section 3(k) in terms of exclusions so that qualified patents relating to CRIs can be examined promptly and speedily granted. The recent guidelines have been issued by the IPO to further foster uniformity and consistency in the examination of such applications.The objective of the guideline is to bring out clarity in terms of exclusions expected under section 3(k) so that eligible applications of patents relating to CRIs can be examined speedily.”
An attempt has been made by the patent office to list statutory definitions of some important terms from different statutes and derived dictionary meaning of other important word, in absence of any statutory definition. Some important terms that are of importance are defined/ summarized as below.
Algorithm (Dictionary meaning): a set of rules that must be when solving a particular problem.
Computer (defined in The Information Technology Act, 2000 (No. 21 of 2000): “any electronic, magnetic, optical or other high-speed data processing device or system which performs logical, arithmetic, and memory functions by manipulations of electronic, magnetic or optical impulses, and includes all input, output, processing, storage, computer software, or communication facilities which are connected or related to the computer in a computer system or computer network.”
Computer network (defined in The Information Technology Act, 2000 (No. 21 of 2000) ): “the interconnection of one or more computers through – (i) the use of satellite, microwave, terrestrial line or other communication media; and (ii) terminals or a complex consisting of two or more interconnected computers whether or not the interconnection is continuously maintained”
Computer programme (defined in the Copyright Act 1957 under Section 2(ffc)): “computer programme” means a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result”
Data (defined in the Information Technology Act, 2000 (No. 21 of 2000): “a representation of information, knowledge, facts, concepts or instructions which are being prepared or have been prepared in a formalized manner, and is intended to be processed, is being processed or has been processed in a computer system or computer network, and may be in any form (including computer printouts, magnetic or optical storage media, punched cards, punched tapes) or stored internally in the memory of the computer;”
Firmware (Dictionary meaning):“a type of computer software that is stored in such a way that it cannot be changed or lost”
Function (defined in the Information Technology Act, 2000 (No. 21 of 2000): “”function”, in relation to a computer, includes logic, control arithmetical process, deletion, storage and retrieval and communication or telecommunication from or within a computer.”
Hardware (Dictionary meaning):“the physical and electronic parts of a computer, rather than the instructions it follows”.
Information (defined in the Information Technology Act, 2000 (No. 21 of 2000): “information” includes data, message, text, images, sound, voice, codes, computer programmes, software and databases or micro film or computer generated micro fiche.”
Per se (Dictionary meaning):“‘by itself” or “in itself” or “as such” or “intrinsically” – to show that you are referring to something on its own, rather than in connection with other things.
Software (Dictionary meaning):“the programs, etc. used to operate a computer”.
Section 4.4.1 of the guideline reads as
- “If the patent application relates to apparatus/system/device i.e. hardware based inventions, each and every feature of the invention shall be described with suitable illustrative drawings. If these system/device/apparatus claims are worded in such a way that they merely and only comprise of a memory which stores instructions to execute the previously claimed method and a processor to execute these instructions, then this set of claims claiming a system/device /apparatus may be deemed as conventional and may not fulfil the eligibility criteria of patentability. If, however, the invention relates to ‘method’, the necessary sequence of steps should clearly be described so as to distinguish the invention from the prior art with the help of the flowcharts and other information required to perform the invention together with their modes/means of implementation.
- The working relationship of different components together with connectivity shall be described.
- The desired result/output or the outcome of the invention as envisaged in the specification and of any intermediate applicable components/steps shall be clearly described
The guideline puts an observation that computer programmes are often claimed in the form of algorithms as method claims or system claims with some ‘means’ indicating the functions of flow charts or process steps. Algorithm-related claims are even wider than computer programmes claimed by themselves, as a single algorithm can be implemented through different programmes in different computer languages. If, in substance, claims in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium belong to the said excluded categories, they would not be patentable.
Even when the issue is related to hardware/software relation, (e.g., when the claims recite ‘processor is programmed to… or ‘apparatus comprising a processor and configured / programmed to…..) the expression of the functionality as a ‘method’, is judged on its substance. It is well established that in patentability cases, the focus should be on the underlying substance of the invention, not the particular form in which it is claimed.
The ‘means’ mentioned in the claims shall clearly be defined with the help of physical constructional features and their reference numerals to enhance the intelligibility of the claims. The claims in means plus function form shall not be allowed if the structural features of those means are not disclosed in the specification. Further, if the specification supports implementation of the invention solely by the computer program then in that case means plus function claims shall be rejected as these means are nothing but computer programme per se.
Where no structural features of those means are disclosed in the specification, and specification supports implementation of the invention solely by the software, then in that case, means in the “means plus function” claims are nothing but software.
In light of these guidelines, it’s seems that for a claim to be allowed, it should have features of hardware or means that are novel and non-obvious. It is important to ascertain from the nature of claimed CRI as to whether it is of a technical nature involving technical advancement as compared to the existing knowledge or having economic significance or both, and is not subject to exclusion under Section 3 of the Patents Act.
If the claims, in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium, fall under said excluded categories, they would not be patentable. However, if in substance, the claims taken as whole do not fall in any of the excluded categories, the patent should not be denied.
Mathematical methods such as methods of calculation, formulation of equations, finding square roots, cube roots and all other similar methods are therefore not patentable. However, mere presence of a mathematical formula in a claim, to clearly specify the scope of protection being sought in an invention, may not necessarily render it to be a “mathematical method” claim.
While including the term “per se”, it was suggested that the change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon. The intention was not to reject the CRIs merely because it includes some algorithm, or computer automation or computer program, if the claim has other elements that are inventive. However, computer programmes, as such, are not intended to be granted patent.
The present guideline presents a test to determine patentability of CRIs.
Tests/Indicators to determine Patentability of CRIs: – page 18 (IPO Guidelines pdf of Feb 2016)
“Examiners may rely on the following three stage test in examining CRI
(1) Properly construe the claim and identify the actual contribution;
(2) If the contribution lies only in mathematical method, business method or algorithm, deny the claim;
(3) If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.
I personally believe that strong IP protection, especially in patents, can be of great value for information technology, computer, and/or software related firms and companies. Emphasis should be laid on granting good quality patents for CRIs. However, in contrast, many small, medium or big firms, companies and businesses get discouraged in terms of securing and utilizing the prospectively rewarding and booming monopoly that can be of great help for them to build their business. From the very start, there always exists an imprecise perception that computer software is not patentable and hence the discouragement. The present guideline further strengthens the notion that software patents are not allowed, especially in absence any positive example.
The guideline presents some examples for inventions that are not patentable, however the guideline fails to provide any positive example, illustrating what kind of CRIs are allowed. A more balanced approach would have been to provide more examples, and possible ways in which claims related to the CRIs can be allowed, keeping a check on frivolous patents. If guideline is followed in its intended sprit, patentability of CRIs seems to be tougher and chances of getting a lawfully issued patent in this domain seems to be limited. With the given example, its looks like even if the matter includes technical advancement but is a computer program, it may not be allowed. As it seems from the wording of the test of CRIs, for a CRI to be patentable, it must be claimed in conjunction with a novel hardware. The obvious question will arise to anyone’s mind is why anyone will claim a CRI with additional features (limiting the scope of invention), if the hardware itself has to be novel. The guideline seems to indicate that a claim of CRI even after having great technical contribution, having novelty and non-obvious invention features, cannot be granted if it doesn’t involve any novel hardware. The sole criterion of test of a CRI is whether the actual contribution is in the hardware or not. The new CRIs guidelines have paved way for more challenges and competition to be faced for getting an idea from IT, software, or computer science technology area patented, specifically in India. It is clear from the guideline that in order to get a claim granted for CRI, the claim should clearly indicate the feature/ structure of hardware or means that have some novelty. To be allowed, the claims therefore need to be worded in such a way so to indicate the change in behavior/feature/structure/impact on the underlying hardware.
About the Author: Preeti Singh, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: [email protected].