India: CRI Guidelines - II

Last Updated: 23 May 2017
Article by Gaurav Arora

This article is a follow up to my article: 'Need Soft Patents for Software Inventions'; in fact, it is one in the series analysing the patentability of 'computer related inventions.'

Although the first article praised the IPO for naming the guidelines aptly – Computer Related Inventions guidelines and not software inventions, it is with disappointment that I have to say that the guidelines fail to add 'something more' to clarify the stand of the patent office with respect to computer related inventions.

Let me start with guidelines on the inventive step determination at section 4.2.

4.2 Inventive Step

'the inventive step must be a feature which is not an excluded subject itself'... pg 9; para 2

Excluded subject: Some subjects have been excluded under section 3. Specifically, section 3 (k) excludes computer programme as such (emphasis added; dictionary meaning of per se) from the purview of definition of inventions. Although the statement above is a verbatim quote from the IPAB judgment on yahoo v. rediffmail, but it seems totally out of context here and has now been made a part of the much awaited general guidelines on patentability of CRI.

This interpretation seems to envisage that the term invention in the preamble of section 3 means an 'inventive step' and that it is the inventive step which should not fall in the excluded categories enlisted in sub clauses of section 3. This is against the rules of interpretation of statutes. This is completely against the simple interpretation that the section is capable of being given. The meaning of the term in a section should be consistent throughout. For example, if we read preamble to section 3 with clause (a), it is not intended that the inventive step not be frivolous but the invention as a whole should not be frivolous. It seems contrary to the statue if we separate the inventive step out of the invention and use section 3 exclusion to exclude the inventions.

Under the same section, at pg 11, second para of the guidelines:

"Accordingly the following points need to be objectively judged to ascertain whether the invention does have inventive step or not:

4.2.1 Identify the "person skilled in the art", i.e competent craftsman or engineer as distinguished from a mere artisan'

4.2.2 Identify the relevant common general knowledge of that person at the priority date" (sic)

  • It has been long understood that the person skilled in the art in step 4.2.1 is defined and identified by the knowledge that he must possess. It is the knowledge that that person is required to possess that defines the person skilled in the art. In almost all analysis, person skilled in the art is a hypothetical person who is a manifestation of all the knowledge available on the priority date relevant to the technology of the invention.
  • Consider a situation where a carpenter accidentally discovers that the blade of his saw performs better upon heat treatment. Person skilled in the art in this case is an imaginary person who is assumed to know all about:

    • tools used in carpentry and the way they are used,
    • the various types of woods and the structure of fiber within,
    • metallurgy including heat treatment processes,
    • chemistry including iron carbon diagrams,
  • Such person skilled in the art may not physically and actually exist but a hypothetical person is assumed to exist which is a manifestation of all the existent knowledge relevant to the invention. He is an imaginary entity to whom all the knowledge is attributed.

    Now since it is the knowledge only which is used to define and identify the person skilled in the art, it is difficult to understand that how once that person is defined and identified what more knowledge is to be identified which he possesses as relevant common general knowledge.
  • In any case, even if we identify the relevant common general knowledge of the skilled person at the priority date, the identified common general knowledge is kept hanging like a claim element which is not connected to any other element in the claim. This common general knowledge once identified has not been referred to anywhere else in the subsequent steps. The next mention of the common general knowledge is with reference to industrial applicability in the next section, Section 4.3. This step seems redundant at best.

4.2.3 Identify the inventive concept of the claim in question or if that cannot readily be done, construe it

  • The preamble to this stepwise approach is:

    'Accordingly the following points need to be objectively judged to ascertain whether the invention does have inventive step or not'

    The sub step 4.2.3 read together with the preamble leads to what may be seen as circular definition. As a sub-step of the method of judging whether the invention has an inventive step or not, what is required to be performed is to identify or construe the inventive concept. Needless to say, if we are able to identify the inventive concept/step/element, it has to be present. The thing whose presence is to be ascertained has to be identified first. Perhaps, the guidelines should use a different term here. This becomes all the more important when the whole purpose of the guidelines is to add clarity and remove/reduce confusion.
  • Perhaps, by inventive concept in sub step 3, what is meant is the alleged inventive concept. But this is still in contradiction to judging the invention as a whole, which is found in the guidelines at more than one place:

    • Section 4.5 3rd para:

      What is important is to judge the substance of claims taking whole of the claims together.

      However, if in substance, the claims, taken as whole, do not fall in any of the excluded categories, the patent should not be denied.
    • Section 4.5.2 1st para:

      the claims shall be examined as a whole.

4.2.4 Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed

That is, identify the difference between state of the art and alleged inventive concept.

  • The procedure here totally moves away from the 'invention as a whole' concept and lays down that after identifying the alleged inventive step, the difference between the inventive step and state of the art be identified.
  • Again, the difference is to be identified between the prior art and the alleged inventive concept only.
  • Strangely, this step has been qualified with the expression, 'if any.' It is difficult to imagine an invention (which has passed the foremost test of novelty and has an alleged inventive step) not to have any differences between the prior art and its identified alleged inventive concept. The guidelines again confuse more than clarify.

4.2.5 Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of inventive ingenuity?

  • Without knowledge of the alleged invention as claimed

    Now the whole concept as claimed in the invention is to be removed from the knowledge of the skilled person identified above. Here again, the system/procedure moves back to the concept of invention as a whole, which now needs to be subtracted from the knowledge of the skilled person.
  • Do those differences constitute steps'

    That is, the differences identified in step 4.2.4 have to be broken down in to steps. And then the vicious questions to be asked is, '... which would have been obvious to the person skilled in the art...' This is again circular reasoning/definition. Obviousness is same as lack of inventive step. To ascertain the presence of inventive step which is the whole purpose of this stepwise approach, what is to be required is to determine whether those differences identified are obvious to a person skilled in the art.

The test above seems to read on to what was laid down by the Supreme Court in Radhey Shyam v. Hindustan Metals as:

"Another test of whether a document is a publication which would negative existence of novelty or an "inventive step"..."

There are two important points here. First, the Supreme court while laying down this test was specifically referring to a document which has been published, i.e., a single document. This is a case when a single document is cited for obviousness and does not have all the features/elements of the claimed invention. It is a test to determine whether the element/feature claimed in the invention, which is missing from the prior art document can be assumed to be inherent/implicit in the document or a judicial notice of the same can be taken based upon the common general knowledge of the person skilled in the art.

Second, the operative word is, 'another.' So what was laid down by the SC as another test in case of a single published document to determine obviousness, has been generalised and rephrased in the guidelines. This test has been laid down as another test to the test in Rado v. John Tye:

"Whether the alleged discovery lies so much out of the Track of what was known before as not naturally to suggest itself to a person thinking on the subject, it must not be the obvious or natural suggestion of what was previously known."

Following seems to be more appropriate a thought, I would leave you with:

'Whether an alleged invention involves novelty and an 'inventive step', is a mixed question of law and fact, depending largely on the circumstances of the case. Although no absolute test uniformly applicable in all circumstances can be devised, certain broad criteria can be indicated.'

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.

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Gaurav Arora
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