24 February, 2016
As you may remember from our post dated December 22, 2015, vide an office order dated December 14, 2015, the Indian Patent Office placed the Guidelines for Examination of Computer Related Inventions (herein GFE-CRI) dated August 21, 2015 in abeyance. After considering the comments and the feedback, the Indian Patent Office has once again made substantial amendments and issued a Revised GFE-CRI on 19thFebruary, 2016 (hereinafter Revised Version).
On a comparison between the version dated August 21, 2015 (hereinafter Abeyance Version), and the Revised Version, it can be observed that as Abeyance Version was a little bit favorably structured.
On a more detailed comparison, it can be observed that Abeyance Version contained lesser number of negative examples (i.e. illustrative and non-exhaustive examples of non-patentable inventions) and included a few positive examples, which approach would have provided clarity to the reader/practitioner and Examiners. However in the Revised Version, the Indian Patent Office has deleted the positive examples and has provided a long list of negative examples.
The negative examples as contained in the Revised Version include the famous Yahoo Vs. Rediff case which was decided by the IPAB. It appears that a few examples are based on decided case from foreign jurisdiction (for example, the “Pension Benefit Systems Partnership” case as decided by a Technical Board of Appeal of the European Patent Office, T 931/95, seems to have been included). Having said so, no basis can be found for many of the examples as contained in the Revised Version.
It also appears that the Revised Version prescribes tests which would negatively impact the grant rate. For example, the Revised
Final version contains a whole section about “Sufficiency of Disclosure” which was earlier not present. It is stated that claims for algorithm are even wider than claims for computer programme and therefore claims for algorithm are excluded from patentability in all forms. The Revised Version places a lot of emphasis on presence of novel hardware. It has been mentioned that means plus function claims shall not be allowed.
Apart from the above, the Revised Version provides a three-step test for determining patentability of CRI, which include:
- Properly construe the claim and identify the actual contribution;
- If the contribution lies only in mathematical method, business method or algorithm, deny the claims;
- If the contribution lies in the field of computer programme, 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 programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claims. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.
The first step in the aforesaid test has been clearly derived from steps 1 and 2 of the Aerotel / Macrossancase law from United Kingdom. In case the term “only” is to be read as “solely”, then it can be said that even the second step is based on the step 3 of the aforesaid case law. However, it is surprising to note that step 4 of the Aerotel case law has not been prescribed. Instead, a test solely pertaining to computer programme has been prescribed as step 3, which places emphasis on novel hardware. The third step furthermore states that if the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.
By reading the aforesaid three-step test along with other sections of the revised version, it appears as follows:
- If a device is claimed, the device has to be fully supported by the specification. Especially if the device is being claimed in “means plus function” form, then such means should have been clearly defined in the specification with the help of physical constructional features. (As per Sections 4.4.1 and 4.4.5 of the Revised Version)
- If a device comprising a memory having instructions, in combination with a processor (which is configured to implement a method in accordance with the instructions) is being claimed, then such device will be treated as being NOT novel and hence, not patentable. (As per Sections 3.9, 4.4.1 and 4.4.5 of the Revised Version)
- If a computer readable medium having instructions stored thereupon is being claimed, then the same will be treated as being directed towards a computer programme per se., and will be treated as being non-patentable. (As per Section 4.4.4 of the Revised Version)
- If a device is being claimed comprising at least one novel hardware, then the same is patentable. If the device being claimed includes known hardware(s) “interconnected in a novel manner”, then the device is patentable. If a device satisfying the aforesaid conditions is being claimed in the “means plus function” form, then such means should have been clearly defined in the specification with the help of physical constructional features. (As per Sections 4.4.5 and 5 of the Revised Version)
- A method implemented by a novel device (as mentioned above) is patentable. (As per 5 of the Revised Version and point 3)
- A method implemented by a known device / hardware is patentable subject to the contribution lying in terms of BOTH the method and the known hardware. (As per 5 of the Revised Version and point 3). While, it is ambiguous as to the nature of contribution expected in terms of the hardware, we believe that if any one of the following (as taken from the previous manual, which is based on EPO Guidelines) is satisfied, we have reasonable chance for obtaining protection for the method claim:
- Higher speed
- Reduced hard-disk access time
- More economical use of memory
- More efficient data base search strategy
- More effective data compression techniques
- Improved user interface
- Better control of robotic arm
- Improved reception/transmission of a radio signal
It can be seen that by prescribing a three-step test which is not prescribed by Indian Courts or any other adjudicatory body in India and by providing examples for which no basis can be found, this Guideline appears to be stepping into the arena of “interpretation of the statute”, which is not a power vested with the Patent Office and is rather a prerogative of a court of law.
For further information, please contact:
Deepak Sriniwas, LexOrbis