Jacob Schindler

For all the talk of the US ‘pendulum’ moving away from and then slightly back toward software patents, India has seen its share of swings as well. The latest development came last Friday, when Intellectual Property India issued a revised edition of its Guidelines for the Examination of Computer-related Inventions (CRIs).

The new standards appear to lower the bar for securing protection in the field. But for many IP owners, the real killer isn’t the still-strict standards on software patent eligibility, but rather the uncertainty created by what seem to be annual shifts towards and away from CRIs.

A detailed legal analysis of the new guidelines and their potential impact will have to wait. But one very obvious change appears to be the deletion of two sections: one that proposed a three-step test to determine CRI eligibility and another which gave a lengthy list of examples of CRIs that would not be patentable.

The previous CRI guidelines, issued in February 2016, included the following test for the patentability of CRIs:

(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.

Following that, they listed inventions that had been deemed unpatentable. These included a method for scoring compatibility between members of a social network, a search-related patent filed by Yahoo!, and some computer implementations of business activities like processing financial data. However, the guidelines issued last Friday simply end at the point where the 3-pronged test and examples had begun in the previous edition.

An anonymous patent office official explained the reason for the deletion to the Press Trust of India:

The language of the guidelines issued in February 2016 was somehow giving the understanding that ‘novel hardware’ clause is mandatory to seek patents for CRIs, which was not the case. But the Indian Patent Office has revised those guidelines and clarified that this clause is not mandatory.

So it would seem the government’s position is that there is no change in policy here. The 2016 guidelines did not actually make the ‘novel hardware’ test mandatory in the first place, so the bar has not really been lowered.

Some patent owners may see things differently. We’ve now had new guidelines on CRIs in 2013, 2015, 2016 and 2017. The 2015 and 2017 editions have been portrayed as making CRI patenting easier. This back-and-forth creates obvious difficulty in planning an IP strategy around rights that are supposed to last for 20 years. As Wipro head of IP Faiz ur Rahman said at this year’s IPBC India event: “We need finality and quicker clarity over whether software is patentable in India […] The uncertainty is really killing innovation.” It seems that some other companies in the IT sector have chosen to respond to the uncertainty by moving away from patents altogether.

The move comes after IP issues were reportedly a top area of contention in high-level US-India trade talks during Prime Minister Modi’s recent trip to Washington. A US official was quoted as saying: “The biggest stumbling block is enforcement. It is a major roadblock when it comes to attracting high-technology transfers from the US, which in turn impacts investments.” Major foreign users of that patent system may well share the view that it is the uncertainty, rather than software’s continued unpatentability per se, that is the problem.