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New dawn for Software Patents in India, the Patent office moves back to “Genesis of 3(k)”

The Controller General of Patents Designs and Trademarks (CGPDTM) has notified his order today (30th June 2016) to amend the Guidelines for the Examination of Computer Related Inventions (CRIs) with immediate effect. The order has replaced the prevailing guidelines of February 2016. Effectively the CGPDTM has deleted Clause 5 and Clause 6 of the prevailing guidelines, that corresponded to:

  • Tests/Indicators to determine Patentability of CRIs and
  • Illustrative examples of Claims which are not patentable

The Test postulated in the prevailing guidelines and the examples provided were widely criticised by many since they were not supported by any Judicial pronouncement and appeared to be the self-evolved understanding of the Patent office. With the deletions, the legal position with respect to Patent eligibility of Software/Algorithm based inventions in India has gone back 15 years to the year 2002, when the Parliament of India gave birth to it, in my word “Genesis of 3(k)”.

Brief History

A Joint Committee on Patents Bill, 1999 was constituted by the Indian Parliament Chaired by TN Chaturvedi that proposed in 2001 that in Section 3 (k) the words ''per se" to be inserted. This change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon and such computer programs shall not be excluded from Patentability. The intention was not to reject them for grant of patent if they are inventions. However, the computer programmes as such are not intended to be granted patent.

CRI Guidelines of 2016

Till date there is no clarity from the High Courts or Supreme Court, on the Legal position set forth by the Parliament with respect to Section 3 (k). In absence of this, the CGPDTM announced Guidelines for the Examination of software Patents (CRIs) in February 2016. It was important to have some guidelines to achieve uniformity with respect of Examination of Patents relating to CRIs across the four branches of the Patent office.

The guidelines of 2016 provided for a three step Test (applied by Patent Examiners) to determine patentability of CRIs, which is in practice today. These steps were:

  • Step (1) Properly construe the claim and identify the actual contribution;
  • Step (2) If the contribution lies only in mathematical method, business method or algorithm, deny the claim;
  • Step (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.

Step (1) involved:

construing the claims means to figure out: On what the monopoly has claimed?

Identify actual contribution means to figure out: what does it add to human knowledge?

Step (2) involved rejection of Patent applications that add only a mathematical or business method or standalone algorithm to existing knowledge.

Step (3) involved analysis of two kinds of inventions (i) computer programs that are executed using a novel hardware and (ii) computer programs that are executed using conventional hardware.

Many inventions failed to qualify the Test since they were not drafted anticipating such examination standards, specially many such inventions were unable to overcome the Examination hurdle with respect to the requirement of Novel Hardware.

Though it was possible during the previous guidelines that even if you have not invented a new hardware itself, you could present whether computer program based invention of yours contributes towards improvement in the performance of the Hardware. Such improvement in the performance of then helped overcome the Test Criterion. However, many practitioners believed that such test itself was an invention of the Patent office and had little legal backing and did not replicate the intent of the legislature.  

Today’s Position

It is for sure that the new guidelines ‘do not’ clarify the position on Patent eligibility of computer related inventions in India. Indeed, they have left the subject open for the Patent lawyers to argue on case to case basis. The matter boils down to the interpretation of the following justification provided by the lawmakers in 2002:

the computer programme may include certain other things, ancillary thereto or developed thereon and such computer programs shall not be excluded from Patentability

Let’s break it down to pieces:

Ancillary thereto: According to my interpretation, the term “Ancillary thereto” means the things essential to give effect to the main subject.

Thing: The meaning of the term “thing” is “whatever may be possessed or owned or to be object of a right”. A “thing” comprises of both tangible and intangible things. According to my interpretation, in respect of the computer related inventions, tangible things include processor and intangible things would include database, GUI, modules.

“things developed thereon” would mean use of a computer program as a tool for developing software products.

Some examples of Computer Program including things ancillary thereto may be a Hardware (Computer, Robotic arm etc.) or a System (collection of several hardware). Some examples of Computer Program including things developed thereon may be to develop something tangible like the way sensors communicate or a secure communication protocol.

Thus, the legislature never intended the ‘thing’ to be a hardware only and definitely not intended to it to be novel in itself and by linking back to the genesis, the current guidelines have lowered the bar of patentability for Computer Related Inventions.

The implementation of new guidelines must eliminate the widespread misconception amongst entrepreneurs in India that software inventions are not eligible for Patent Protection. While the source code of any computer program can straightforwardly be registered for a Copyright protection the software related inventions (like apps, enterprise applications and other computer implemented methods) must enjoy unhindered protection in India under the patent law.

Disclaimer

This article should not be considered as a Legal opinion of any kind. The views presented in the article are the personal views of the author in his individual capacity and must not be construed as the views of his firm.