IPO publishes draft guideines for examination of computer related inventions: A perspective


Last week the Indian patent office published draft guidelines for examination of computer related patent applications. The draft guidelines can be accessed here.Comments on the same are due by 19th July, 2013 and should be addressed to the deputy controller Mr. B.P.Singh ([email protected])

The proposed guidelines aim to foster consistency and uniformity in patent office practice for examination of computer related inventions. A very welcome development I would say, considering that past patent office practice has been marred with inconsistencies. Readers may remember that Rajiv had analyzed controller’s decisions  pertaining to software patents and highlighted  some inconsistencies in the patent office practice in his posts here and here.
With the help of past patent office and IPAB decisions, the guidelines highlight the issues involved in patentability of Computer related inventions (CRIs). Hopefully these guidelines, should bridge the gap in patent office manual. Unlike the previous guidelines issued for traditional knowledge and biotech inventions, these guidelines are more detailed and explicitly state that “these guidelines do not constitute rule making.” Even though the guidelines are not binding, I believe they can be cited or quoted during patent prosecution.
Image from here
Some important aspects mentioned in the guidelines are analyzed below:
Indian patent law: Position on Section 3(k)
The Patents amendment act 2002 introduced explicit exclusions from patentability with regard to Computer Related Inventions (CRIs) under section 3(k), a mathematical or business method or a computer programme per se or algorithms.
Through an ordinance in 2004, the exclusions under section 3 (k) were divided into two parts and amended as :(k) a computer programme per se other than its technical application to industry or a combination with hardware;(ka) a mathematical method or business method or algorithms. 
However, through the enactment of Patents amendment act, 2005 which did not include the amended provisions of the ordinance, the position of 2002 amendments, were restored automatically.

Through the 2004 amendments, India was on the brink of widening the scope of protection afforded to computer related inventions, which would have adversely affected its burgeoning software industry. Therefore as the guidelines state,the re-instatement of the original phraseology of section 3 (k) clearly indicates that the legislature intended to retain the original scope of exclusion and did not approve its widening as attempted through the ordinance. Amlan has analyzed patentability of computer software in his blog post here.

Computer programmes “per se”:
It should be noted that, inventions relating to mathematical method, business method or algorithm represent absolute exceptions to patentability in accordance with Section 3(k). Only computer programmes are qualified and suffixed with the term “per se”. Therefore inventions related to computer programmes represent limited exception to patentability. Therefore if a claim of an invention is oriented towards a novel, inventive and industrially applicable computer or related device along with the programme for defining its functionality, then it may be considered to be patentable.
All computer programmes inherently require a combination with some hardware for its functionality. Therefore a computer programme loaded on a general purpose known computer or related devices cannot be held patentable. Shamnad’s previous posts on this can be accessed here.
Means plus Function:
The guidelines state that “claims in means plus function form shall not be allowed if the structural features of those means are not disclosed in the specification. Further, if the specification supports implementation of the invention solely by the computer program then in that case means plus function claims shall be rejected as these means are nothing but computer program per se.”
Do we need to re-order the sequence of applying patent doctrines to claims?
A flow chart describing examination procedures of computer related inventions is shown on Page 43 of the guidelines. The guidelines provide a step wise sequence of patentability determinations which involve:
1. Determining technical field of the invention 
2. Conducting a prior art search. 
3. Determining whether the claims are novel and involve an inventive step; S 2(1)(j)
4. Subsequently compliance with unity of invention and enablement requirements is checked. 
5. Lastly subject matter eligibility (section 3) is determined.
For absolute exceptions to patentability, this ordering involves unnecessary expenditure of resources. For such absolute exceptions,the order of applying patent doctrines to claims should be such that subject matter eligibility is decided first and questions related to novelty and obviousness are addressed subsequently. In Alexsam Inc. vs. IDT Corp, Judge Mayer argues that “”[t]he obligation to determine what type of discovery is sought to be patented” so as to determine whether it falls within the ambit of section 101 “must precede the determination of whether that discovery is, in fact, new or obvious.” 
Also our very own IPAB in Yahoo vs. Controller stated that “Finally we come to the ground of non-patentability under S. 3 (k). If the claimed subject matter is not an invention or if the invention is not patentable or if it is excluded by S.3 of the Act, then none of the other objections need to be considered. Only if the claimed subject matter is a patentable invention we need to look at anticipation, obviousness etc.
However in this article Dennis Crouch and Robert Merges argue that the law does not require the threshold subject matter eligibility question to be decided in any particular order.
I for one believe that in case of absolute exceptions to patentability i.e. exceptions which are not qualified (mathematical method, business method), determination of subject matter eligibility should precede determination of novelty and inventive step. This provides an expeditious path and quality time saved thereby may be invested in examining other applications.
In case of limited exceptions to patentability (exceptions which are qualified for instance Section 3(d) etc), determination of novelty and inventive step is an intrinsic part of ascertaining subject matter eligibility. So in these cases substantive provisions (novelty, inventive step) must be determined before determining subject matter eligibility. As Shamnad points out in one of his recent posts, given the unique position Section 3(d) occupies in our statute, for limited exceptions to patentability, subject matter eligibility threshold question need not be decided in any particular order.

Conclusion:
Aparajita in her guest post earlier had highlighted several discrepancies in patent office practice with respect to business method patents. Hopefully the guidelines should bring in uniformity and consistency in the patent office practice. Also the guidelines state that “the examining division shall keep itself abreast with the latest orders of CGPDTM and various judicial pronouncements on the subject.” I imagine that in addition to asking the examining division to keep itself abreast of latest developments, the IPO would  stand to benefit if the USPTO’s practice of issuing memorandums to the patent examining Corps and giving guidance on examining patent applications in view of the Court’s decisions, could be adopted.

Madhulika Vishwanathan

Madhulika Vishwanathan

Madhulika is a registered Indian patent agent and has completed her Master’s in Pharmacology from the Institute of Chemical Technology (ICT), Mumbai. Her interests include issues involving pharmaceutical and biotechnology patent law, regulatory aspects like Hatch Waxman litigation and antitrust law.She is currently working at law firm based out of Memphis, TN.

4 comments.

  1. AvatarAnonymous

    I for one believe that in case of absolute exceptions to patentability i.e. exceptions which are not qualified (mathematical method, business method), determination of subject matter eligibility should precede determination of novelty and inventive step. This provides an expeditious path and quality time saved thereby may be invested in examining other applications.

    I disagree with your opinion. And I also think that your idea will lead to time saving. I think it has practical implications. Consider an examiner issuing an FER in India after 3 -4 years refusing it solely on subject matter eligibility – I believe that they are going to take same amount of time in arriving at results of “subject matter test” – even if they take lesser amount – it will lead to unnecessary to and fro arguments on subject matter eligibility and hearing- and say once the decision is reached that invention was indeed eligible- then there will be tests on novelty and inventive step – and then again same grind. What I mean to say is that practically first doing subject matter eligibility testing is going to be very taxing in terms of patent grant/refusal process. If one performs novelty, inventive step tests and bundles it with eligibility at least we save some time by arguing all at once. Practical limitations of our system and inefficiency of our patent office does not permit such a radical idea.

    Rahul B

    Reply
  2. AvatarAnonymous

    Check out the latest post on IP Kat by Darren. The kat reports that an examiner refused thrice to search because he found the matter being not worthy of search since it was not subject matter eligible under their laws. And there is no such provision in our law. An examiner cannot refuse to search. He has to make search as per rules and laws. Check section 12, Examiner has to report controller with investigations made under section 13. And once we file request, there there is no discretion with patent office to not conduct search. they will have to in any case, either they agree with subject matter eligiblity or not.

    Rahul B

    Reply
  3. AvatarAnonymous

    Rahul, i think it should be left upto the examiner. If the examiner thinks its an absolutely non-patentable subject matter then, he can chose to save his time. On the other hand, if somehow the applicants are able to prove that the application doesn’t fall under non-patentable subject matter, then it will drag the examination procedure.

    Reply

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