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25th Session of the WIPO SCP: Statement on Assessment of Inventive Step

Posted by Rohini Lakshané at Dec 15, 2016 02:45 PM |
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Statement emailed by Rohini Lakshané on behalf of the Centre for Internet and Society to the Secretariat for the WIPO Standing Committee for the Law of Patents, Twenty Fifth Session, with reference to agenda item 7, "Sharing session on examples and cases relating to assessment of inventive step including, but not limited to, the topics suggested in document SCP/24/3, paragraph 8.

Based on submissions by various stakeholders, the Indian Patent Office released a new set of guidelines for patent examiners to examine Computer Related Inventions or CRIs, in February 2016. The guidelines, inter alia, introduced a new three-step test, which The Centre for Internet and Society, India, had proposed to the IPO in its submissions. The test determines the applicability of section 3(k) of the Indian Patents Act, which excludes as inventions "a mathematical or business method or a computer program per se or algorithms".

The three-step test places a restriction on the patenting of software. 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. Only if the contribution of the claim lies in both the computer programme as well as hardware, it would be considered for other steps of patentability. All in all, the new guidelines are in compliance with the legislative requirement for patentability of software.

Innovation in electronic hardware as well as in software is cumulative and often involves building upon previous inventions. Various small and medium enterprises in their submissions had requested a strict standard for patentability of software inventions. We hope that the implementation of these guidelines would enable start-ups and small and medium enterprises to innovate without the fear of patent infringement litigation.

Thank you, Madam Chair.

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Rohini Lakshané

Rohini Lakshané is a technologist by training, a public policy researcher and a Wikimedian. She has worked on several research and advocacy projects on the intersection of technology, policy, and civil liberties. Her body of work encompasses diverse territories such as the application of technology and policy to solve issues of gender inequity, violence and discrimination; access to knowledge; openness; patent reform; making tech spaces diverse and inclusive; and the cross-hairs of gender, sexuality and the Internet. In 2014 and 2015, Rohini served on the jury of The Best of Blogs, an international award honouring excellence in online activism, instituted by German broadcaster Deutsche Welle. In a previous avatar, Rohini worked as a technology journalist and editor in the print and web domains, ferreting out stories on human interest and online civil liberties. Rohini tweets @aldebaran14.