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Cessation of Cry of CRI? Indian Patent office revisits its guidelines on Computer Related Inventions in India

Computed Related Inventions (CRI) and its scope of patent in India gets a new impetus once again with the revised guidelines issued by the Indian Patent office. Interestingly, this is the third attempt of the Controller General of Patent, Design and Trade Marks (CGPDT) to bring in clarity to the computer related inventions in India. After facing stringent objections on the draft guidelines, the first version received its day light during August, 2015 however, the chaos and confusions continued. The judicial interpretation of patentability of CRI paved way for the second set of revised guidelines during February 2016 however, little did it help to mitigate the chaos.

The Indian Patent office in June 30, 2017 has further issued revised guidelines for examination of computed related inventions. Whether the revised guidelines would effectively cease the industrial cry on CRI is something to look out.

Introduction of Section 3 (k)

Akin to Section 3 (d) of the Patents Act, 1970 which still upsets and off sets many international interest in pharmaceutical industry, Section 3 (k) of the Patents Act, had a rough road since the tabling of Patent (Second Amendment) Bill. Interestingly, the words ‘per se’ was recommended by the joint parliamentary committee and consequently, found its way to the Patents (Amendment) Act, 2002. Hence, mere computer programmes or in other words, computer programmes which does not have any technical contribution, became non patentable in India. However, the section created more confusion than clarity and in 2004 the Government underwent a failed legislative attempt to amend and revise the scope of CRI by way of Patent (Amendment) Ordinance, 2004. The intention of the amendment was to amend section 3 (k) to read “a computer program per se other than its technical application to industry or a combination with hardware” which in effect would result in patenting of computer program with industrial application that were used in combination with hardware.

First Guidelines - 2013

After more than 8 years since the passing of the Patent (Amendment) Act of 2005, the Indian Patent office issued its first draft guidelines on CRI which was criticized by several stakeholders since the guidelines emphasized on the requirement for novel hardware elements for the patentability of CRI. This was felt and argued that it was beyond the exclusions of the section 3(k).

The first set of guidelines which received stiff industry objection mandated that for considering the CRIs to be patentable, the invention should involve

The next major development by the Indian Patent office was when it introduced the draft guidelines during 2013 for examining of CRI and circulated the same for industry comments and views. The draft, however was nipped at its inception. The 2013 draft attempted to interpret the term ‘technical effect’ to be an extension of the term ‘technical advancement’. ‘Technical advancement’ is one of the imperative test criterion for grant of patent in India, precisely to mean that the invention should give a technical advancement from the existing technology. The draft guidelines even enumerated a number of examples to construe what was as a technical effect for CRI. The draft guidelines received severe criticism once again from industry and this time from patent practitioners too.

The Ericsson Case - 2015

In the meantime, Telefonaktiebolaget L M Ericsson V Intex Technologies (India) Private Limited [2015] brought in judicial interpretation of Section 3 (k). The Delhi High Court pursuant to analysis and interpretation given in Alice Crop V CLS Bank International, held that it appears that any invention which has a technical contribution which has a technical effect and is not merely a computer program per se and is patentable.

Second Guidelines - 2016

Consequent to the Ericsson’s case, the Office of the Controller General of Patents, Designs and Trademark, issued the second set of draft guidelines. The draft guidelines provided the methodology for the examiners to determine the technical advancement and further provided examples of patentable CRI. However, the draft guidelines once again faced huge criticism particularly from Software Freedom Law Center (SFLC) – an NGO where in the guidelines was criticized being impeding the development of business particularly start-ups in India. It was alleged by SFLC that the method of encoding, decoding, encryption and decryption correspond to mathematical methods. They had written to the Prime Minister’s office stating the above problems and soon the Department of Industrial Policy and Promotion (DIPP) requested the Controller General of Patents, Designs and Trademarks to revisit the draft guidelines. Consequently, the revised Second Guidelines were issued in 2016.

The Second set of Guidelines on CRI recommended that the examiner should focus on the underlying substance of the invention and not the particular form in which it is claimed.

It laid down the triple tests criteria stated as below.

The claims should be properly construed and the actual contribution of the claim must be identified, and if the contribution lies only in a mathematical method, business method or algorithm, the claims are to be denied. However, if the contribution lies in the field of computer programmes, the following tests should to be applied for CRIs:

If the claims are in conjunction with novel hardware, the examiner could proceed further, if the contribution lies solely in the computer programme, the claim should be denied; and if the contribution lies in both the computer programme as well as the hardware in question, the examiner should proceed to the other steps involved in assessing patentability.

Revised Guidelines – June, 2017

The revised guidelines are more or less based on the Second guidelines however has expressly excluded any specific tests or other criterion.

The revised Guidelines while elaborating the requirement of sufficiency of disclosure, states what amounts to such disclosure as follows.

The Guidelines further states following triple test and bench mark for Claims.

The Guideline further elaborates that what is important is to judge the substance of claims taking whole of the claim together. If any claim in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium falls under the excluded categories, such a claim would not be patentable. However, if in substance, the claim, taken as whole, does not fall in any of the excluded categories, the patent should not be denied.

The Guidelines expressly state that the following claims are excluded categories of a “Computer Programme per se”:

In light of the revised Guidelines introduced, it can be safely construed that the patent examiner shall now on focus on the underlying substance of invention and not the form in which it is claimed. It might be very well the cessation of cry of CRI.