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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Gaurav Arora
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions