International report - Impact of revised guidelines for examination of computer-related inventions 11 Jan 17
LexOrbis - India
The patenting of computer-related inventions (CRIs) has long been a hotly debated subject not only in India, but also in other jurisdictions. The ongoing debate over CRIs' patent eligibility highlighted the need for examination guidelines for CRIs to ensure uniformity for patent controllers across the four Indian patent offices, as well as predictability for applicants. After a long consultation process, on February 19 2016 the Indian Patent Office issued the latest guidelines for the examination of CRIs.
The guidelines appear to have overlooked the relevant jurisprudence from the Intellectual Property Appellate Board (IPAB) and the high courts. Rather, they introduce a three-step test for determining the patent eligibility of subject matter for which no logical rationale can be found. The three steps are as follows:
- The applicant must properly construe the claim and identify the actual contribution.
- If the contribution lies only in a mathematical method, business method or algorithm, the claims will be denied.
- If the contribution lies in the field of computer programming, the examiner will check whether it is claimed in conjunction with novel hardware. A computer program itself cannot be patented. If the contribution lies solely in the computer program, the claims will be denied. If the contribution lies in both the computer program and hardware, the examiner will proceed to the other steps of patentability.
The first step has clearly been borrowed from the first two steps established in the UK Aerotel v Macrossan case. Further, if the term 'only' is to be read as 'solely', the second step can be said to be based on step three of that case. However, step four of the Aerotel test was not considered; rather an entirely different step three pertaining solely to computer programs has been prescribed. This third step focuses only on "a contribution" made by novel hardware, without specifying the nature of the contribution expected.
Further, the latest guidelines include a section on determining the sufficiency of disclosure, which sets out unreasonable requirements and overlaps with the section on determining the patentability of CRIs. For example:
- ‘means plus function’ claims will not be allowed if there is no support for the means in the specification; and
- a system, device or apparatus with only a processor or memory will be deemed to be conventional and not fulfilling the eligibility criteria of patentability.
It is difficult to understand how these are relevant for determining the sufficiency of disclosure. Further, this section requires every feature of a hardware-related invention to be described with suitable illustrative drawings, while a method-related invention must be described with flowcharts. Neither drawings nor flowcharts are mandatory under the Patents Act.
Impact on patent grant rate
Taking these aspects of the guidelines into consideration, an analysis has been performed to assess the impact of the guidelines on the grant rate of CRI-related patent applications.
The analysis examined the patent statistics of five random applicants selected from among major filers in India in the field of CRIs, and compared the periods of September 1 2015 to November 20 2015, and September 1 2016 to November 30 2016 (ie, before and after the issuance of the revised CRI guidelines). The patent statistics used for the analysis excluded any withdrawn or abandoned matters from the refused matters. The charts below show the results of the analysis.
The charts show that the grant rate dropped by 14%. Therefore, both foreign and domestic innovators working in the CRI field in India are concerned about the negative impact of the guidelines on the examination of CRIs. It remains to be seen whether the latest guidelines will remain in force and whether the Patent Office will address innovators' concerns.
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