Chopping and changing the CRI guidelines

Attempts by the Indian Patent Office (IPO) to clarify section 3(k) of the 1970 Indian Patent Act have resulted in three sets of guidelines outlining what type of computer related inventions (CRIs) can be patented, all of which have received their share of praise and criticism.

Section 3(k) states that “a mathematical or business method or a computer program per se or algorithms” cannot be defined as an invention, and therefore cannot be patentable.

The most recent set of guidelines came on the last day of June this year, when the IPO attempted to give patent examiners perspective when dealing with CRI patent claims.

These came on the back of a second set of guidelines published in February 2016, which replaced the first from August 2015. It is fair to say it has been a turbulent time for those seeking computer software patents in India.

The 2017 guidelines list what aspects of CRIs cannot be patented. Those that involve mathematical methods, for example, are “purely abstract or intellectual methods” and are not patentable.

Other examples in the guidelines of types of software that are not patentable include algorithms, which are not patentable “in all forms”.

Crucially however, no specific examples were listed.

“It is well-established that, while establishing patentability, the focus should be on the underlying substance of the invention and not on the particular form in which it is claimed,” the 18-page document reads.

The guidelines further state that patent examiners will now be required to focus on the technical advancement of a CRI when assessing patentability. However, they go on to caution that if a claim, taken as whole, falls into any of the excluded categories in any way, it cannot be patented.

“It is important to ascertain from the nature of the claimed CRI whether it is of a technical nature involving technical advancement as compared to the existing knowledge, or having economic significance, or both,” the document adds.

These guidelines were introduced after the previous set from February 2016 came under heavy criticism for being too stringent and reactive to the criticism of the first iteration, which was said to be too liberal.

The stringency of the February document seemingly contradicted the rhetoric coming from the courts.

A remark in the judgment by the Delhi High Court in the Ericsson v Intex Technologies case in March 2015 said: “Any invention which has a technical contribution or has a technical effect and is not merely a computer program per se, as alleged by the defendant ... is patentable.”

A look at some of the patents granted in the period between the first “liberal” guidelines and those in February 2016 suggests that many would have had less luck less than a year later.

For example, in early February 2016, application number 5493/CHENP/2007 for a “bilaterally generated encryption key system” was passed, as was 2348/CHE/2007 for a method of “securely transferring an electronic document”.

Had they been filed a few weeks later, the likelihood of the patents being struck down under the second guideline is undoubtedly much higher, particularly under the section that reads: “If the contribution lies in the field of computer programs, 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.”

New rules

What has changed under the 2017 guidelines? The IPO said in the guidelines that the aim of the rules is “to provide guidelines for the examination of patent applications in the field of CRIs by the IPO so as to further foster uniformity and consistency in the examination of such applications”.

Essenese Obhan, founding partner of Obhan & Associates, says the practical impact of the latest guidelines is “non-existent”.

“There is just so much on both sides with these guidelines that the net effect is that everything stays the same.

“The only thing that really changes is the earlier requirement of insisting on novel hardware aspects. Now it doesn’t have to be novel, just some sort of hardware requirement,” Obhan says.

The second set of guidelines outlined a three-step test for examiners to determine the patentability of computer software: (i) properly construe the claim; (ii) identify the actual contribution; and (iii) deny the claim if it is purely mathematical. For a computer program, examiners were required to check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention.

Crucially, these were removed from the most recent set of guidelines.

“In absence of any tests or mandatory requirements, the recent guidelines have shifted the focus of patentability of CRIs on the underlying substance of the inventions,” explains Obhan.

He continues: “This is the most significant change, but there was never a need for this anyway. I don’t feel it was needed initially and therefore the change doesn’t make much difference at all.”

Obhan focuses on paragraph 4.5 of the new act which states: “It is well-established that, while establishing patentability, the focus should be on the underlying substance of the invention and not on the particular form in which it is claimed.

“There are some good things about the guidelines. They have set out a reasonable test to see what is excluded, and had they stopped there, it would be great,” he says.

“These guidelines now give enough ammunition once again to the examiners to reject every CRI patent for one reason or the other. Without specific examples it is problematic.”

The major criticism of the guidelines from various lawyers, including Obhan, was the lack of specific examples of excluded subject matter.

Obhan picked out section 4.4.4 as an example of this.

It states that the act “clearly excludes computer programs per se and the exclusion should not be allowed to be avoided merely by camouflaging the substance of the claim by its wording”.

Not all bad

Despite the lack of examples of what is and is not patentable, the latest guidelines were not criticised by everyone.

“The new guidelines indicate what the patent office position is when it comes to CRI inventions,” states Abhishek Pandurangi, partner at Khurana & Khurana.

“Previously they had taken a very anti-patent stance by introducing some requirements such as new hardware,” he says.

“This effectively shows that there is no such requirement and any software that has an advancement technically can be looked at from the patentability point of view and be independently looked at by an examiner.”

The constant changes to the guidelines have left some people wondering whether a new set of guidelines will be forthcoming soon.

In comparison to the US and much of Europe, India has relatively few court cases to refer to when it comes to computer software patents, so the guidelines are, arguably, even more important.

The patent office has proved it is not afraid to change the guidelines if needed and Pandurangi adds that this is something he would like to see.

“Barring the embarrassment that it may cause the patent office, I would like to see a new set of guidelines,” he states.

“The guidelines themselves and the patent office have been very reactive, which can be good. But to try to factor in the popular outcry has clearly had an impact, which is not the best way to go about this.

“This is why there is so much back and forth. The first guidelines should have been more neutral and balanced and factored in everything—there shouldn’t have been a need for the second and third versions.

“I feel the present guidelines are not in the best shape. There are no examples, which make it hard for people to obtain patents.”