Keeping the section 2(k) of the Patents Act, 1970 more clear and precise, the Patent office has recently issued fresh guidelines for examining the inventions related to computer in India. Earlier also, the IPO had issued the guidelines but due to unambiguous and unclear statues, the guidelines fail to establish a remarkable status in the field of Computer Related Inventions (CRIs).
Now moving ahead with the new set of guidelines, CRIs comprise of inventions that involve the use of computer, computer network or other programmable apparatus and include such inventions having one or more features of which are realized wholly or partially by means of a computer program or programmes. These inventions are created with the help of intellectual property contribution and thus needs a strong protection under the ambit of Patent law in India1. It has been seen that large number of IT companies and R&D organisations are working on the CRIs and in order to protect those valuable inventions and granted Patent of the CRIs and to prevent those companies from the heat of litigation, these guidelines will play an important role in India. Further these guidelines will also help to restrain patent offices from granting frivolous patents in India.
Many countries such as US, Japan and Europe have imposed certain restrictions for the protection of computer related inventions and an attempt has been made to maintain a good balance between domestic interest (of industry and public at large) and international obligations under Trade Related Aspects of Intellectual Property Rights (TRIPs) agreement. In view of this and being a TRIPS member, the Indian Patent Office (IPO) has laid similar restrictions in Indian Patent Act, vide section 3(k), which excludes "mathematical or business methods or a computer programmes per se or algorithms" from being patentable subject matter in India Patent law. Being frivolous in nature, the s 3(k) has always been a mystery for inventors of CRIs. The most mysterious term stated in the s. 3(k) is per se. However, the term "per se" has been interpreted differently and CRIs have been a topic of debate for long time, especially in absence of litigation. Indian Courts haven't got much opportunity to clear the cloud. Several times, the IPO has tried to clear the vagueness in the section with an attempt to provide a uniform manner by which claims related to the CRIs should be examined. With the increasing volume of patent applications filed in the domain, it has become necessary for the patent regime to cope up with the challenges of processing patent applications in the field of computer related inventions and related technologies to set—forth the new guidelines for-allowing-such-applications or inventions to be declared as novel and to get granted by the IPO. More specifically, the clear views are required much in section 3(k) in terms of exclusions so that qualified patents relating to CRIs can be examined promptly and timely granted. In considering all the above aspects, we believe that the new guidelines will surely waive all the past inclusions and help in increasing uniformity and consistency in the examination of such applications. The main objective of the guideline is to bring out clarity in terms of exclusions expected under section 3(k) so that eligible applications of patents relating to CRIs can be examined speedily.
As per the new guidelines for examination of Computer Related Inventions (CRIs), issued from the Office of the Controller General of Patents, Designs and Trade Marks on February 19, the examiners have to rely on three stage test in examining the CRI applications, starting with properly constructing the claim and identifying the actual contribution. If the contribution lies only in mathematical method, business method or algorithm, then the examiner denies the claim. However, if the contribution lies in the field of computer program, 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 program in itself is never patentable. If the contribution lies in both the computer program as well as hardware, the IPO proceeds to other steps of patentability.
In the recent guidelines, the IPO has listed statutory definitions of some important terms from different statutes and derived dictionary meaning of other important words, in absence of any statutory definition. Some important terms that are of importance are defined/ summarized as below.
- Algorithm (Dictionary meaning): a set of rules that must be when solving a particular problem.
- Computer (defined in The Information Technology Act, 2000 (No. 21 of 2000): "any electronic, magnetic, optical or other highspeed data processing device or system which performs logical, arithmetic, and memory functions by manipulations of electronic, magnetic or optical impulses, and includes all input, output, processing, storage, computer software, or communication facilities which are connected or related to the computer in a computer system or computer network.
- Computer network (defined in The Information Technology Act, 2000 (No. 21 of 2000) ): "the interconnection of one or more computers through – (i) the use of satellite, microwave, terrestrial line or other communication media; and (ii) terminals or a complex consisting of two or more interconnected computers whether or not the interconnection is continuously maintained.
- Computer programme (defined in the Copyright Act 1957 under Section 2(ffc)): "computer programme" means a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result.
- Data (defined in the Information Technology Act, 2000 (No. 21 of 2000): "a representation of information, knowledge, facts, concepts or instructions which are being prepared or have been prepared in a formalized manner, and is intended to be processed, is being processed or has been processed in a computer system or computer network, and may be in any form (including computer printouts, magnetic or optical storage media, punched cards, punched tapes) or stored internally in the memory of the computer.
- Firmware (Dictionary meaning):"a type of computer software that is stored in such a way that it cannot be changed or lost.
- Function (defined in the Information Technology Act, 2000 (No. 21 of 2000): "function", in relation to a computer, includes logic, control arithmetical process, deletion, storage and retrieval and communication or telecommunication from or within a computer.
- Hardware (Dictionary meaning):"the physical and electronic parts of a computer, rather than the instructions it follows.
- Information (defined in the Information Technology Act, 2000 (No. 21 of 2000):"information" includes data, message, text, images, sound, voice, codes, computer programmes, software and databases or micro film or computer generated micro fiche."
- Per se (Dictionary meaning):"'by itself" or "in itself" or "as such" or "intrinsically" – to show that you are referring to something on its own, rather than in connection with other things.
- Software (Dictionary meaning):"the programs, etc. used to operate a computer".
Section 4.4.1 of the guideline reads as follows:
If the patent application relates to apparatus/system/ device i.e. hardware based inventions, each and every feature of the invention shall be described with suitable illustrative drawings. 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. If, however, the invention relates to 'method', the necessary sequence of steps should 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.
The working relationship of different components together with connectivity shall be described.
The desired result/output or the outcome of the invention as envisaged in the specification and of any intermediate applicable components/steps shall be clearly described2.
The guideline puts an observation that computer programmes are often claimed in the form of algorithms as method claims or system claims with some 'means' indicating the functions of flow charts or process steps. Algorithm-related claims are even wider than computer programmes claimed by them, as a single algorithm can be implemented through different programmes in different computer languages. If, in substance, claims in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium belong to the said excluded categories, then such cases would not be patentable3. Even when the issue is related to hardware/software relation, (e.g., when the claims recite 'processor is programmed to... or 'apparatus comprising a processor and configured / programmed to.....) the expression of the functionality as a 'method', is judged on its substance. It is well established that in patentability cases, the focus should be on the underlying substance of the invention, not the particular form in which it is claimed.
The 'means' mentioned in the claims shall clearly be defined with the help of physical constructional features and their reference numerals to enhance the intelligibility of the claims. The claims in means plus function form shall not be allowed if the structural features of those means are not disclosed in the specification. Further, if the specification supports implementation of the invention solely by the computer program, then in that case, means plus function claims shall be rejected as these means are nothing but computer programme per se. Where no structural features of those means are disclosed in the specification, and specification supports implementation of the invention solely by the software, then in that case, means in the "means plus function" claims are nothing but software4.
In light of these guidelines, it' seems that for a claim to be allowed, it should have features of hardware or means that-are novel and non-obvious. Regarding the term "per se", it was suggested that the change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon. The intention was not to reject the CRIs merely because it includes some algorithm, or computer automation or computer program, if the claim has other elements that are inventive. However, computer programmes, as such, are not intended to be granted patent5.
At last, it can be seen that at an extent the new guidelines succeed in providing a better picture for the computer related inventions in India. The guideline presents some examples for inventions that are not patentable; however the guideline fails to provide any positive example, illustrating what kind of CRIs are allowed. It has been presumed that if the matter includes technical advancement but is a computer program, it may not be allowed and for a CRI to be patentable, it must be claimed in conjunction with a novel hardware. The guideline seems to indicate that a claim of CRI even after having great technical contribution, having novelty and non-obvious invention features, cannot be granted if it doesn't involve any novel hardware. The new CRI guidelines are more challenging and competitive for the IT industry in India. It is clear from the guidelines that in order to get a claim granted for CRI, the claim should clearly indicate the feature/ structure of hardware or means that have some novelty.
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.