Comments on the Guidelines for Examination of Computer Related Inventions (CRIs)

(Prepared with comments from Pranesh Prakash)

The 2015 Guidelines were stuck in the pipeline for a long time. The first draft was released in 2013 and a round of public consultation later, it paved the way for the current guidelines. The guidelines exist to supplement the practices and procedures followed by the Patent Office (as prescribed in the Indian 'Manual of Patent Office Practice and Procedure')[1], with the specific objective of ensuring consistent and uniform examination of CRI applications.

To begin with, the Guidelines have been significantly trimmed down from their draft version. CIS had commented on the Draft Guidelines in 2013 and broadly observed/recommended the following:

• That the explanation to section 3(k) (Para 2.4) include the subject matter test.
• That the Guidelines clarify that section 3(k) intending to exclude “computer programs per se” means excluding computer programs by themselves.
• Supplying clarifications to the meaning of Inventive Step

       Para 5.3 stated: (ja) "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not    obvious  to a person skilled in the art;

Ambiguity around the terms “technical advance” and “person skilled in the art” persists.

• The Guidelines place CRIs in the same pool as other inventions, to the extent of suggesting that CRIs be evaluated on same standards of novelty, non-obviousness and industrial applicability as other inventions. This is problematic, because CRIs are inventions with features such as obsolence and being largely incremental innovations.
• That the guidelines prescribing dictionary meanings for undefined terms (in Indian statutes) – was a dangerous prescription to make because the words “firmware”, “software”, “hardware” and “algorithm” have different meanings in different contexts.
• That the guidelines had a misguided sense of ordering the paragraphs. The subject matter test (which should be undertaken first) was mentioned after the narrower test for computer programs per se. To ensure correct examination re CRIs the application of the subject matter test should precede all other patent criterion evaluations.[2]

All the above observations/recommendations still hold true – unfortunately, none of them have been incorporated into the 2015 Guidelines. The few unwanted changes that eventually made their way have nullified the progress the 2013 draft made in terms of providing clarity to section 3(k) and narrowing down the scope of software patents. For instance-

• Instead of supplying clarity to terms such as “technical effect”, “technical advancement”, the 2015 Guidelines removethe definition of these terms. However, section 6 lists six questions that must be addressed by the examiner to determine the technical advancement of the invention.
• Similarly, the explanation to section 3(k) has been deleted in the 2015 text.
• The explanation to “inventive step” made reference to the Enercon case (thereby Windsurfing International Inc. and Pozzoli case), for the determination of inventive step. The explanation has also been discarded in the 2015 Guidelines.
• Other changes include providing better definition of Algorithms, making thescope of mathematical model and business method claims under section 3(k) more expansive.

Narrowing down excluded subject matter relating to CRIs

Under the crucial section “Determination of excluded subject matter relating to CRIs” (section 5.4 in the draft Guidelines; section 4.5 in 2015 Guidelines), the 2013 draft deemed inventions consisting of computer programmes combined with general purpose computers as non-patentable. However, a computer programme couple with novel hardware was deemed possibly patentable subject matter. That version stated “5.4.6....In cases where the novelty resides in the device, machine or apparatus and if such devices are claimed in combination with the novel or known computer programmes to make their functionality definitive, the claims to these devices may be considered patentable, if the invention has passed the triple test of novelty, inventive step and industrial applicability. ” In the 2015 Guidelines, however, section 4.5 does not shed substantive light on the matter of patentability of software combined with novel hardware. Instead a new section titled “Determinants” has been introduced:

5. Determinants

5.1 For being considered patentable, the subject matter should involve either

- a novel hardware, or

-a novel hardware with a novel computer programme, or

-a novel computer programme with a known hardware which goes beyond the normal interaction with such hardware and affects a change in the functionality and/or performance of the existing hardware.

A computer program, when running on or loaded into a computer, going beyond the “normal” physical interactions between the software and the hardware on which it is run, and is capable of bringing further technical effect may not be considered as exclusion under these provisions.

And,

6. Indicators to determine technical advancement

6.1 While examining CRI applications, the examiner shall confirm that the claims have the requisite technical advancement. The following questions should be addressed by the examiner while determining the technical advancement of the inventions concerning CRIs:

(i) whether the claimed technical feature has a technical contribution on a process which is carried on outside the computer;

(ii) whether the claimed technical feature operates at the level of the architecture of the computer;

(iii) whether the technical contribution is by way of change in the hardware or the functionality of hardware.

(iv) whether the claimed technical contribution results in the computer being

made to operate in a new way;

(v) in case of a computer programme linked with hardware, whether the programme makes the computer a better computer in the sense of running more efficiently and effectively as a computer;

(vi) whether the change in the hardware or the functionality of hardware amounts to technical advancement.

If answer to ANY of the above questions is in affirmative, the invention may not be considered as exclusion under section 3 (k) of the Patents Act, 1970.

It is evident from section 5 that the Patent Office intends to expand the scope of patentable subject matter, and narrow down applicability of section 3(k). The clause “a novel computer programme with a known hardware which goes beyond the normal interaction with such hardware and affects a change in the functionality and/or performance of the existing hardware.” contributes to the expansion. There is no definition as to what will constitute“...normal interaction with such hardware...” Neither do the Guidelines set a standard for assessment of “normal interaction.” Should “normal interaction” be determined from the definition/perspective supplied by the vendor, or from the known universe of interactions possible from that device?

Further, as a stakeholder (Anand and Anand) in their comments on the 2013 draft pointed out, increasing the threshold to a novel hardware (and not just a general purpose computing machine) would go against the legislative intent as the requirement of a novel hardware was not mentioned anywhere in the Act.

These gaps may pave the path for a rather broad scope of patentable software inventions.

Secondary application of the subject matter test

“...Therefore, if a computer programme is not claimed by “in itself” rather, it has been claimed in such manner so as to establish industrial applicability of the invention and fulfills all other criterion of patentability, the patent should not be denied. In such a scenario, the claims in question shall have to be considered taking in to account whole of the claims. ”

The way 3(k) functions is that it's a subject matter test for what an invention is (with non-inventions excluded, since an application that has not been found to be in order may not be granted a patent
under s.43, and to be 'in order', the application has to be "for an invention" (s.6, s.10, etc.)). The tests for novelty, inventive step, and industrial applicability have to in any case be applied, regardless of the subject matter test. So what the above-quoted sentence does is removes the subject matter test, as it uses "in itself" to mean to the exclusion of patentability tests other than subject matter.

Proposed definition of “computer programme per se”

Further, CIS suggests a definition to "computer programme per se":

"Computer programme per se in the relevant clause means (a) any computer programme in the abstract, (b) any computer programme expressed in source code form, including source code recorded on an information storage medium, or (c) any computer programme that can be executed or executes on a general purpose computer, including computer programme object code designed for execution on a general purpose computer that is recorded on an information storage medium."

Furthermore, since the inclusion of computer programmes in a broader application should not render the application ineligible subject matter, CIS previously proposed an addition to the test:

"We propose a new part to the above test to make the clause clearer. The Manual should specify that “the computer programme portions of any claimed invention should be treated as if it were covered by prior art and patentability should thus be determined with respect to the other features of the invention”. This way, we can ensure that an invention which merely uses or implements a computer programme is not granted patent on the basis of the inventiveness of the computer programme per se."

Issues with illustrative examples

CIS observes that most of the examples provided in the document are things that should *not* be awarded patents as per section 3(k).

8.2 describes a computer programme per se, and awarding a patent to this would (additionally has no novelty, no inventive step)
8.4 describes a computer programme per se. General Purpose Computer. (additionally has no novelty, no inventive step)
8.5 describes a computer programme per se. The "repeaters", etc., are software. General Purpose Computer. (additionally has no novelty, no inventive step)
8.6 describes a computer programme per se. (additionally has no novelty, no inventive step)
8.8 describes a computer programme per se. It can be implemented on any general purpose computer. (additionally has no novelty, no inventive step)
8.1 is a simple algorithm, and forms the basis of parallel processing in a computer, of which a wireless device is a subset. (additionally has no novelty, no inventive step)
8.1, 8.3, 8.7 have no novelty, no inventive step, despite not being computer programmes per se.

This issue was also raised by stakeholders in their comments to the IPO on the 2013 draft.

Conclusion

The 2015 Guidelines have narrowed the exclusions in section 3(k) – which does not bode well for innovation, especially innovation by startup enterprises. The new guidelines will permit a larger scope of applications to be granted, which will lead to bigger players in the market amassing huger patent portfolios. There is also an urgent need for clarification on “ novel hardware”.

On a broader level, CIS has repeatedly argued for discarding patent protection for software inventions, because of the unique nature of such inventions and the repercussions software patenting has on subsequent innovative activity. The 2015 Guidelines disappoint on rolling back and clarifying software patenting in India.

[1]Chapter 08.03.05.10 of the Manual, containing provisions pertaining to section 3(k) of the Patents Act, 1970 shall stand deleted with coming into force of these Guidelines for examination of CRIs.

[2]The flow chart in the 2013 draft guidelines show a step by step process of examining CRIs. However, the subject matter determination is done towards the end. There is debate on whether there should be a set order for examining patents. However, in the case of CRIs there must be an exception as the statute explicitly prohibits certain types of patents (business method, algorithm etc). As argued earlier, in order to reduce transaction costs, the subject matter test must be made at the very beginning. There should at least be a preliminary determination as to Section 3(k) to reject patent applications for those inventions that can easily be classified under this provision.