India has a new set of guidelines for examinations of computer related inventions that are more favourable to patentees by removing a novel hardware requirement that was stipulated in the previous guidelines. However, Indian IP practitioners see ambiguities that may lead to unsuitable patents being granted.
The computer related inventions (CRIs) guidelines, which came into effect on June 30, aim to clarify the exclusions under India Patents Act section 3(k) so that eligible applications of patents relating to CRIs can be examined more efficiently. A three-stage test stipulated previously has been removed. Of particular interest to patentees is that the requirement of novel hardware in CRIs is no longer mandatory. The guidelines emphasise that the underlying substance of the invention is important and, therefore, require the patent office to examine the invention as a whole and for the technical advancement exhibited by the claimed invention.
Birendra Kumar, senior associate at Fox Mandal & Associates, explains that the previous guidelines contradicted the intention of the Joint Parliamentary Committee (JPC) where the requirement of “novel hardware” was not indicated. The JPC was formed for the Patents (Second Amendment) Bill 1999 to recommend the possibility of amendment of the Patents Act, 1970. The JPC mentioned this while introducing “per se” in Section 3(k) during the amendment of the Patent Act 2002:
In the new proposed clause (k) the words ''per se" have been inserted. This change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon. The intention here is 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. This amendment has been proposed to clarify the purpose.
The JPC did not intend to restrict the grant of patents to qualified CRIs, but to restrict the invention disclosing only the software per se. However, the requirement of the “new hardware element”, prescribed by the CRI guidelines 2016, posed a big hurdle to the grant of CRIs since it is difficult to come up new hardware every time.
“Almost all stakeholders were opposed to the new guidelines and in their feedback requested removal of the said guideline,” says Kumar. “To bring an end to the chaos, the CRI examination guidelines were revised in June 2017 to bring the law in conformity with the intention of JPC and with the objective of promoting research in software technology based invention.”
Comparison with other jurisdictions
How computer related inventions are examined in India and at the European Patent Office (EPO) is fundamentally similar. “However, the EPO allows software implemented methods even if they are not hardware enabled,” says Ritushka Negi, partner at Remfry & Sagar. “In contrast, the new CRI guidelines require enablement of such methods through interaction with hardware elements and establishing a technical effect. Further, unlike India, claims to the computer readable medium are allowed by the EPO.”
Negi explains that the US subject matter exclusion under 35 USC Section 101 is different from how eligibility is reviewed in India and, therefore, a comparison with India is not easy since the very nature of how CRIs are viewed in these two jurisdictions is different. “Nevertheless, the Alice Corp. v CLS Bank decision relating to software patents makes it difficult for such method claims to be allowed in the US,” she says. “This is perhaps similar to India, for different reasons, where even under the new guidelines, allowing software implemented methods remains a challenge.”
For India, CRIs should be more than just software per se and must include features such as novel and useful interaction between the software and the machine. “EPO is comparatively stringent in allowing software related inventions,” says Kumar. “CRIs should solve a technical problem and have a technical effect. In contrast, US law is more liberal and the process in a CRI-based invention is allowable if it can be performed on a device/apparatus.”
Shortcoming of the new guidelines
Some stakeholders believe the guidelines are favourable for the software industry while others believe that they don’t do enough to remove the ambiguity about CRIs. For example, there are no case examples for positive inventions. “This is seen as important because just like negative examples of what is not allowed, such positive examples would aid the examiners who like to strictly follow the guidelines while reviewing the patentability of computer related inventions,” says Negi. “There are other stakeholders who believe that the guidelines are disappointing and that the revisions have made the guidelines ambiguous which would result in the granting of unsuitable patents.”
“The said guidelines attempt to infuse objectivity to the process of examination of patent applications; however, subjectivity arises during the examination owing to the lack of proper reference examples detailing the allowed and not-allowed subject matter,” adds Kumar. “Training workshops to bring everybody on the same page could be of great help in the effective implementation of the new guidelines.”
India’s software industry generally welcomes the new CRI guidelines to help promote innovation, but the guidelines still lack clarity. Providing clearer examples and training will help to solidify understanding of the new provisions.