From time-to-time, the Indian Patent office has been issuing Guidelines for Examination (hereinafter GFE) of applications. The aim of each such GFEs have been to foster uniformity and consistency in the examination of patent applications by the Indian Patent Office. In the past, GFEs have been issued in respect of the following:
- Search and Examination of Patent application;
- Pharmaceutical Related Inventions;
- Biotechnology Related Inventions;
- Traditional Knowledge and Biological Material Inventions; and
- Computer Related Inventions (hereinafter CRI).
The journey pertaining to Guidelines for Examination of Computer Related Inventions (herein GFE-CRI) has been both time-consuming as well as riddled with lot of amendments. Tracing back the evolution of GFE-CRI, it can be noticed that a draft version was released by the Indian Patent Office on 28th June 2013 (hereinafter Draft Version). This was followed by receiving feedbacks from various stakeholders. Based on the feedback thus received, the Indian Patent Office made substantial amendments and released final version of GFE-CRI on 21st August, 2015.
In light of a comments received from some stakeholders, vide an office order dated December 14, 2015, the Indian Patent Office placed the final version in abeyance (hereinafter Abeyance Version). Once again all stakeholders were invited to participate in a discussion and were asked to provide written feedback (in the form of additional negative examples for consideration for inclusion). After considering the comments and the feedback, the Indian Patent Office has once again made substantial amendments to the GFE-CRI and issued a revised version on 19th February, 2016 (hereinafter Revised Version).
In terms of contents, it can be seen that Draft Version contained only negative examples (i.e. illustrative and non-exhaustive examples of non-patentable inventions). Apart from mentioning one decision from Intellectual Property Appellate Board as an example, it is pertinent to note that all other examples pertained to decisions of the Indian Patent Office itself. In the Abeyance Version, the number of negative examples was reduced (essentially deleting the examples pertaining to decisions of the Indian Patent Office) and a few positive examples were also provided for the benefit of the reader. However, in the Revised Version, the Indian Patent Office has deleted the few positive examples and has provided a long list of negative examples. The negative examples as contained in the Revised Version include the famous Yahoo Vs. Rediff case which was decided by the IPAB. It appears that a few examples are based on decided case from foreign jurisdiction (for example, the "Pension Benefit Systems Partnership" case as decided by a Technical Board of Appeal of the European Patent Office, T 931/95, seems to have been included). Having said so, no basis can be found for many of the examples as contained in the Revised Version.
It terms of scope, it can be seen that Draft Version prescribed tests which would have negatively impacted the grant rate. For example, the Draft Version defined the term "algorithm" (which is excluded from patentability) in a very generic sense, required the applicant to establish hardware novelty to obtain claims for processes and so on. The Abeyance Version was a little bit logically structured. It appears that the Revised Version again prescribes tests which would negatively impact the grant rate.
The Revised Final version contains a whole section about "Sufficiency of Disclosure" which was earlier not present. It has been mentioned that means plus function claims shall not be allowed if there is no literal support for the same in specification. It is stated that claims for algorithm are even wider than claims for computer programme and therefore claims for algorithm are excluded from patentability in all forms. The Revised Version places a lot of emphasis on presence of novel hardware contrary to whatever jurisprudence is available from Indian courts and tribunals in respect of computer related inventions. For example, the Revised Version does not take into account a technical effect criterion for patentability of computer related inventions as used by the Hon'ble Delhi High Court in the Ercisson vs. Intex decision and by the Hon'ble IPAB in the Enercon decision in line with the famous EPO decision - VICOM.
Apart from the above, the Revised Version provides a three-step test for determining patentability of CRI, which include:
- Properly construe the claim and identify the actual contribution;
- If the contribution lies only in mathematical method, business method or algorithm, deny the claims;
- 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 claims. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.
The first step in the aforesaid test has been clearly derived from steps 1 and 2 of the Aerotel / Macrossan case law from United Kingdom. In case, the term "only" is to be read as "solely", then it can be said that even the second step is based on the step 3 of the aforesaid case law. However, it is surprising to note that step 4 of the Aerotel case law has not been prescribed. Instead, a test solely pertaining to computer programme has been prescribed as step 3, which places emphasis on novel hardware. The third step furthermore states that if the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability, which is quiet ambiguous as to the nature of contribution expected in terms of hardware.
Thus, it can be seen that by prescribing a three-step test which is not prescribed by Indian Courts or any other adjudicatory body in India and by providing examples for which no basis can be found, the Indian Patent Office has stepped into the arena of "interpretation of the statute", which power is not vested upon the Patent Office by the statute. Rather the Patent Office should have relied upon whatever little jurisprudence is available in India in respect of patentability of computer related inventions from authorities superior to the Patent Office.
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.