INVENTIVENESS (NON-OBJECTIVENESS):
Inventiveness also known as non-obviousness is an important characteristic in patenting, which determines that if the invention does involve an inventive step or goes beyond what that person skilled in the relevant technical field would regard as obvious.
The worldwide standard for determining the patentability of is that the invention should not be obvious to the common man with ordinary skill in that field at the time of filing the patent application. This also includes a subjective evaluation of whether the suggested invention would have been apparent to an average skilled person.
INDUSTRIAL APPLICATION:
Industrial applicability in patents is the practical utility or usefulness of the invention in a given industry or field. For the global standard the invention must have a particular, valid, and substantial utility. It should be able to be made or used in an industry or for some productive purpose. The exclusions in patentability Inventions without practical utility or those that are purely theoretical may be considered non-industrially applicable.
These criteria together guarantee patentability of an invention, so patents that are issued really do represent genuine technological advance or useful inventions. All of this is, of course, too obvious, but interpretation and application may be quite different between offices or jurisdictions.
This criterion of inventiveness or non-obviousness has been a subject of huge debate within the United States in software and business method patents. Judgments made by the Supreme Court, such as Alice Corp. v. CLS Bank International and Bilski v. Kappos, have defined what patent claims should be more than an abstract concept and should show a particular inventive application.
PATENT EXAMINATION PROCESS IN INDIA
The patent examination process in India, from filing a patent application to the grant or rejection of a patent, is given below: This results in the following main step-by-step patent examination process in India:
The process begins with a patent application at the IPO. It, therefore, requires that an applicant files a patent application with a complete specification showing details of an invention clearly with such drawings and abstract as may be required.
Formal Examination: In order to meet the formality of patent application, IPO carries out formal examination wherein they check whether there exist any mandatory documents, fees, or required information with the application and if there existed any deficiency then applicant could be provided an opportunity to rectify deficiencies.
Publication of Application: After the application clears the formal examination, it is published in the Official Patent Journal after the expiration of 18 months from the date of filing or the priority date. As a result of publishing, public notice of the invention is given.
Request for Examination: Within 48 months from the filing date or the priority date, an applicant will have to request substantive examination. In case the above request is not made within the specified time period, then the applicant's application shall be deemed withdrawn.
The IPO conducts substantive examination for patentability of the invention. The procedure involves checking whether it is new, has an inventive step, and has industrial applicability. It also includes consideration of the scope and clarity of the patent claim.
A First Examination Report is released by the IPO after having conducted substantive examination. It consists of objections or defects identified with the patent application. Of course, there exists a scope for the applicant to reply to the FER and put across his arguments to dispose of the objections raised.
Amendments and Arguments: An applicant may amend patent claims and argue to overcome objections made in the FER. Under the process, an applicant may request a hearing before the patent examiner to put his case forward.
Final Decision: In response to the applicant, IPO may declare its final decision either granting the patent or rejecting it. It then requests the applicant to pay the required fees in case it grants the patent.
Patent Grant: Upon grant of a patent, the IPO issues a patent certificate. Thus, in this respect, a patent can offer protection for 20 years from the date of filling. A patent becomes enforceable after the grant, and the patentee gets exclusive rights over the invention.
Appeals and Oppositions: In case the patent application is refused, the applicant can appeal before the IPAB. A third party can file pre-grant or post-grant oppositions to the granting of a patent.
Patent examination is a very complex and time-consuming process; thus, it involves interaction between the applicant and the patent office. Proper response to examination reports and effective communication with the patent examiner are the requirements for a smooth result.
SOFTWARE-RELATED PATENTS UNDER INDIAN LAW
The Indian Patent Act has undergone considerable debate and evolution, subsequently in the interpretation of patents regarding software. Important points about software-related patents in India are:
Indian law also states that software inventions will be patentable if they meet the general criteria of patentability: novelty, inventive step, and industrial applicability.
Section 3(k), Indian Patent Act : Section 3(k) of the Indian Patent Act categorically excludes certain inventions from patentability. First, it clearly excludes "a mathematical or business method or a computer program per se or algorithms." This provision has been subject to controversies and interpretation in the context of software-related inventions.
Technical Effect and Novelty: Technical effect or contribution is a prerequisite for the patentability of any software-related invention. Computer programs or algorithms purely, devoid of any technical application or effect, come within the exclusions under Section 3(k).
Improvements in the Technical Field Indian patent law would allow patents basically on improvements in the technical field. Thus, inventions related to software which make some improvement in a technical field, or solve a technical problem would become patentable.
Guidelines to Examination: The Indian Patent Office has put out guidelines to the examiners to scrutinize the computer-related inventions. They expect a technological contribution and attitude that novelty and inventive step should be judged irrespective of the form of the claims.
Although in India there is scope for patentability of invention wherein such has a technical effect or a technical advancement under Section 3(k) exclusion of the Indian Patents Act. With careful consideration of patentability criteria, effective draftsmanship, and concurrence with changing legal interpretation, successful software-related patents applications in India can take place.
REFERENCES
- Interns, I. (2022) Patent examination in India: Procedure, forms, fees and Timeline, Intepat IP. Available at: https://www.intepat.com/blog/patent-examination-procedure-india/ (Accessed: 11 November 2023).
- Sharma, A. (2015) Section 3(K) of the India Patents Act, 1970: A never ending challenge for it giants - patent - india, Section 3(k) Of The India Patents Act, 1970: A Never Ending Challenge For IT Giants - Patent - India. Available at: https://www.mondaq.com/india/patent/394478/section-3k-of-the-india-patents-act-1970-a-never-ending-challenge-for-it-giants. (Accessed: 11 November 2023).
- IndiaFilings (2023) Software patent registration, IndiaFilings. Available at: https://www.indiafilings.com/learn/software-patent-registration/ (Accessed: 11 November 2023).
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.