Introduction Intellectual Property is a way of protecting technologically invented rights. Various forms of creation…
Indian Patent Office (IPO) has come up with another set of revised guidelines indicating how CRIs would be examined in India. This piece is a quick update and summary of the guidelines, although practically speaking, nothing much has really changed as regards the interpretation of the statute Section 3(k) is concerned and the tests mentioned in the instant guidelines are substantially the same as the previous guideline and are in consistency even the original intent of the statute.
Brief of the Guideline
The guideline essentially starts with definition/interpretation of various terms relating to computer-based inventions, followed by how novelty/non-obviousness (inventive step) is to be interpreted/evaluated. Section 4.4.4 relates to how section 3(k) excludes mathematical methods or business methods or computer programme per se or algorithms. The guideline states:
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. The algorithm related claims are even wider than the 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.
The guideline further goes onto state:
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 Patents Act clearly excludes computer programmes per se and the exclusion should not be allowed to be avoided merely by camouflaging the substance of the claim by wording (e.g. different sub-routines are performed in different physical locations such as processors will not suffice).
In sum therefore, a subject matter that is expressed simply as a sequence of steps/flow diagram would have lower chances of being held patentable until the steps indicate an improvement in the underlying hardware/substance of the invention. Type of the claim (be it system or method) would therefore have little dent on eligibility of patentable subject matter as it is only the form/expression of the claim, and does not indicate whether the core inventive step is on the functionality/steps or on the underlying tangible medium. Therefore a “processor configured to process a financial transaction” would not be patentable but a “processor configured to optimize the structure segments of a data block of a network packet might be”.
The guidelines further mention that means + function claims would not be patentable unless the means is clearly expressed in the form of a physical/tangible component and at a part of the inventive step lies in in the means part of the claim. In case the means do not constitute inventive step but the function does, patentability may not be rendered to be strong.
The guideline then further goes onto mention exclusivity of mathematical methods and business methods from patentability. The guideline further states that subject matters relating to computer programmes, set of instructions, routines, sub-routines, storage medium with instructions, database, among other like expressions would not be held patentable in India. Finally, before the guideline proceeds forward to give examples of subject matters that are not patentable in India, below are given as the tests/indicators that would be followed by the examiners to determine patentability of the CRIs.
Examiners may rely on the following three stage test in examining CRI applications:
(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.
In sum therefore, the present guidelines re-iterate the same conclusion as made in the previously issued guidelines wherein it was stressed that in India, in order to get a patentable subject matter, the inventive step has to be on the underlying hardware, and therefore subject matters that relate to reduction in processing time, optimization of memory, firmware, image/video/graphics processing, network packet processing, among other like subject matters would be patentable. However, what contrasts the position of the IPO is an exemplary recently issued patent, which we respectfully believe does not meet the patentability criteria outlined in the instant guideline, and hence gives the same old impression that what is intended by the statute (and also outlined in the instant guideline) might not actually be practically followed on a daily basis during prosecution of multiple cases.
Just for instance, a simple review of Granted Patent 271931 relating to Instant Messaging System gives an impression that step 3 of the three stage test is not being followed critically as no clear novel hardware element/technical effect has been identified/substantiated and the claimed subject matter incorporates two types of authentication, wherein confidential information is processed by a first type, and non-confidential information is processed by the second type, making the contribution of the invention to lie solely in the computer programme. Even while responding to the 3k objection, the Applicant submitted that it is necessary for the messaging system to learn whether first authentication and second authentication are passed successfully, and that interaction with exterior is necessary for carrying out the determination step (of whether first/second authentication is passed). It is further argued that the present invention facilitates the user to perform non-confidential data related operation, and that security requirements of the messaging are met. Would leave it to an open assessment if the arguments are strong enough to overcome the cited 3k objection!!!
About the Author: Mr. Tarun Khurana, Partner and Patent Attorney in IIPRD can be reached: [email protected].