International report - Latest guidelines for examination of computer-related inventions 02 Aug 17
LexOrbis - India
A draft version of the computer-related inventions (CRI) guidelines was first published by the Indian Patent Office (IPO) on June 28 2013. The IPO consulted various stakeholders and considered their feedback. The final guidelines were published on August 21 2015. This version was more liberal than the draft version. However, the final guidelines were put in abeyance using a public notice on December 14 2015 without clearly specifying reasons for the changes. A revised set of guidelines considered more restrictive than the previous set was issued on February 19 2016. Aggrieved by the restrictive terms, stakeholders made requests to the Department of Industrial Policy and Promotion (DIPP) and the IPO to reconsider the revised guidelines.
The latest version was issued on June 30 2017 and marks a return to the liberal approach. This version is based on the recommendations of an expert committee established by the DIPP. The committee examined various representations and held intensive stakeholder consultations in order to consider a diverse range of views.
Patentable subject matter
The previous guidelines included no examples of patentable subject matter. However, numerous examples of non-patentable subject matter were listed. For example, Yahoo v Rediff (222/2011), which was decided by the Intellectual Property Appellate Board (IPAB) in 2011 and Pension Benefit Systems Partnership (T 931/95), which was decided by the Technical Board of Appeal of the European Patent Office. Besides these, no basis for the remaining examples existed. All of these examples of non-patentable subject matter have been deleted in the latest version of the guidelines. Ideally, examples of patentable subject matter and non-patentable subject matter should have been provided to offer readers greater clarity surrounding what is patentable and what is not. This notwithstanding, a relative balance has been struck in the latest version..
General purpose computer
Some sections of the previous guidelines discredited invention claims involving a general purpose computer, particularly in the form of a processor or memory. All such sections have now been deleted. These sections included the following examples:
“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.”
“When the claims recite ‘processor is programmed to… or ‘apparatus comprising a processor and configured/programmed to.”
“[D]ifferent sub- routines are performed in different physical locations such as processors will not suffice.”
As almost every industry is driven by software-related inventions, the mere presence of a general purpose computer in a computer-related invention is not the best criterion for rejecting a patent grant.
The previously prescribed three-step test for determining the patentability of CRIs that contained the novel hardware requirement has been deleted. Formerly, as per this three-step test, for a patent to be granted a novel hardware had to be present, irrespective of the technical effect achieved in a CRI. Such a rigid stance clearly goes against the legislative intent, which is clear from the 2002 amendment. The amendment excluded “computer programme per se” from consideration as patent-eligible subject matter, instead of “computer programme”. Moreover, the legal validity of the novel hardware requirement was always questionable, particularly in the IPAB decision in Accenture Global Service Gmbh v Assistant Controller of Patents and Designs (283/2012). In Accenture, the IPAB held that the requirement of a novel hardware is not mentioned in the Indian Patent Act, the Manual of Patent Office Practice and Procedure or any guidelines by the Indian Courts in such matters.
Concerning the mathematical method exclusion, the latest guidelines specify that the mere manipulation of abstract ideas or purely mathematical problem solving without specifying a practical application are excluded under this category. Further, such exclusion may not apply to inventions that include mathematical formulae and result in systems for encoding, reducing noise in communication, electrical or electronic systems or encrypting and decrypting electronic communications. This position is in line with the landmark Vicom (T 0208/84) decision and is a welcome clarification.
In respect of the business method exclusion, the latest guidelines have not changed as the focus remains on the substance and not the form of claimed subject matter.
The main cause for concern in the updated guidelines is the algorithm exclusion, which still lacks clarity. As per the present wording, any step or series of steps intended for solving a problem can be excluded under the algorithm category. This makes no sense considering that every method will fall within the scope of such a broad exclusion criterion. For instance, Section 4.4.1 of the latest guidelines states that:
“If the invention relates to a method, the necessary sequence of steps shall 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.”
However, the same sequence of steps could also fall under the algorithm exclusion, as per the discretion of examiners and controllers. Considering that a number of Indian judicial precedents exist that provide requisite clarity in respect of algorithm exclusion, including Enercon (IPAB Order 224/2010), Ericsson v Intex (CS(OS) 1045/2014) and Ericsson v Lava (CS(OS) 764/2015), this lack of clarity should have been avoided.
The merits of such guidelines being binding on the patent applicants are questionable, as they supersede neither the statute nor judicial precedents. However, these guidelines will be binding on the patent examiners and controllers. The latest guidelines will also have noteworthy practical implications. As examiners and controllers are obliged to abide by the latest guidelines while examining patent applications involving computer-related inventions, their approach when issuing examination reports or granting or rejecting patents to computer-related inventions will be determinative.
The latest guidelines are generally welcome in that the three-step test has been ousted and they offers scope for computer-related inventions to be critically examined without depriving them of patents for the want of novel hardware.
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