CII/CRI GUIDELINES-A NECESSITY
As far as India is concerned, patent applications related to CIIs are examined in light of a general restriction imposed upon the patentability of computer programs per se under Section 3(k) of the Patent Act. In recent past, IPO offices spread across different metropolitan cities have used different criteria to determine patentability, novelty and inventive step CIIs. Accordingly, the published guidelines aim to bring uniformity and consistency to the examination of applications for computer-implemented inventions across the IPO offices. In addition, the guidelines suggest a procedure to be adopted by examiners while examining applications for CIIs. The guidelines also include various decisions of the controllers, IPAB and judiciary to focus upon issues related to the examination of applications for CIIs, and discuss a consensus developed while allowing or rejecting such applications.
TRACING THE HISTORY OF CII GUIDELINES
The evolution of enactments towards patentability of software
related inventions can be traced to the year 2002 when Section 3(k)
was first introduced in Indian patent law by the Patent (Amendment)
Act, 2002, in the backdrop of Indian becoming signatory to TRIPS in
1999 and more proactively opening its market to foreign
investments. While the same somewhat opened the door for
patentability of processes as well as software related inventions,
it explicitly debarred the patentability of mathematical and
business methods, computer programs per se and algorithms. The
Joint Parliamentary Committee (JPC) tried to balance and calibrate
intellectual property protection with national and public interest.
The JPC clarified that the phrase "per se" was inserted
in Section 3(k) to address the patentability of inventions relating
to computer programs that may include certain other things
("ancillary thereto" or "developed thereon").
The JPC further clarified that the intention of the bill was not to
reject all computer related inventions, but was only to distinguish
such inventions from claims directed to stand-alone computer
programs or computer programs by themselves.
Yet, the inventors of software related inventions could derive little benefit from these provisions in the absence of any guidelines for explaining such newly introduced Section 3(k). As a corrective measure, the central government thus took further steps to extend broader protection to software inventions: the Patents (Amendment) Ordinance 2004 was promulgated in December 2004 and Section 3(k) was amended to exclude from patentability "a computer programme per se other than its technical application to industry or a combination with hardware". While this amendment admittedly expanded the scope of patentability of software related inventions, the ordinance was allowed to lapse after six months. Still, while bringing the third amendment bill, the cabinet ministry retained the amendment corresponding to the ordinance and such retention was endorsed by Ministry of Commerce and Industry. The cabinet ministry clarified that given the emerging opportunities in the software sector and growing Indian strength in information technology, it is necessary to clarify the provisions in Section 3 (k) so as to allow patenting of a computer programme only in case it has technical applications to industry or is in combination with hardware. Software alone is already protected under copyright laws.
Yet, due to stiff opposition from open source code industry, free software lobbyists and opposing parliamentarians, the Patents (Amendment) Act 2005 did not honor the Section 3(k) amendment as contemplated by 2004 ordinance and backed by central government, and restored the earlier position to narrow the scope of Section 3(k) as widened by the 2004 ordinance. In addition, by virtue of such restoration, Section 3(k) became compliant with the Agreement on Trade-Related Aspects of IP Rights.
In order to clarify the amended statutes, the Indian Patent Office released a Draft Manual of Patent Practice and Procedure in 2005 providing guidelines on the types of claim allowed in respect of software-related inventions. As per the guidelines, claims to computer programs per se, computer-readable media with programs recorded thereon, methods implemented by software that lack technical effect and methods with a technical effect but lacking hardware support in the specification are not patentable. Yet again, the Patent Amendment Act 2005 invited criticism on the subject of patentability of software inventions, as the phrase "per se" used in alliance with software inventions was not defined in the Indian statute. Even the 88th Report on the Patent and Trademark System in India, which was presented in Rajya Sabha in October 2008, highlighted the need to define clearly the meaning of "per se", as mentioned in Section 3(k).
The government issued another version of the manual in 2008. The guidelines on software inventions were more elaborate, but similar in content. As per the guidelines, claims to computer programs per se, computer-readable media with programs recorded thereon, methods implemented by software that lack technical effect and methods with a technical effect but lacking hardware support in the specification, are not patentable. The guidelines state that in respect of a method, "The claim orienting towards a 'process/method' should contain a hardware or machine limitation."
As a part of gathering feedback for the 2008 guidelines, the government invited comments from interested parties, including legal practitioners and industry, and organized stakeholder meetings across the country to develop a consensual approach. These meetings generated further debate, with the open source code industry opposing the guidelines set out in the manual and arguing that the manual tries to patent software program under the garb of hardware. Such interpretation was however contested by others, who contended that the guidelines cannot be a determining factor for interpreting the law, but are used only to describe practice and procedure.
As a cover up measure to the loopholes in the 2008 Guidelines, the Patent office published a practice Manual in 2011 that states (on page 9) that "If the claimed subject matter in a patent application is only a computer programme, it is considered as a computer programme per se and hence not patentable. Claims directed at 'computer programme products' are computer programmes per se stored in a computer readable medium and as such are not allowable. Even if the claims, inter alia, contain a subject matter which is not a computer programme, it is examined whether such subject matter is sufficiently disclosed in the specification and forms an essential part of the invention." A major question persisted even after such explanation was whether the patentability would be assessed merely based on how the claim has been written or whether the underlying claimed technical subject matter would be taken into account to assess whether there is a tangible output and technical effect caused by the subject matter.
Finally, on 28th June 2013, the Indian Patent Office, due to ever mounting feedback from numerous stakeholders, came out with another draft of guidelines on subject matters that exclusively related to Computer implemented inventions (CII). With these new set of guidelines for examination of CIIs, the IPO intends to lay down a standard set of procedures, which the Examiners examining the patent applications corresponding to CIIs are required to adhere to.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.