Method of hair removal- not a method of treatment

The IPO has allowed claims directed to method of removal of hair considering such method to be a cosmetic method resulting only in improvement of the appearance of the skin. The claimed method was considered as not resulting in treatment or enhancement of economic value of the subject as compared to the conventional methods, therefore not falling within the ambit of section 3(i). The order can be found here.

Indian Patent Office Gives CRIs a New Lease of Life

New CRI Guidelines Introduced

The patentability requirements and examination criteria for computer related inventions has been under scrutiny in major jurisdictions of the world. Considering the special nature of this ever evolving field there have been discussions and changes as well as interpretations of legislation on how best to protect this fast-paced innovation where each invention has a short life. The advent of AI, big data and internet of things has further brought new challenges into the forefront requiring clarity of how to apply the law and protection mechanisms to inventions in these high tech fields. The latest guidelines released by the IPO are a forward and welcome step in this direction.

Initiatives by the IPO

In India specifically, there has been increasing interest in both software products and services. There has been growth in the industry as well as the market for ICT products. The Indian ICT sector has several Indian as well as MNC R&D Innovation centres and is a hot bed of innovations. Consequently, this has led to an increase in patent filings and has resulted in initiatives by the IPO in the form of examination guidelines for CRI. In the past few years these have gone through a lot of changes.

The guidance for examining software related inventions were first introduced in the ‘Manual for Patent Practice and Procedure’ in 2005. It underwent several changes in different versions of this manual released thereafter in 2008, 2010 and 2011. In 2013, a separate draft set of guidelines apart from the manual was released dedicated only to the examination of computer related inventions. These were revised in 2015, but were soon put in abeyance with a new set replacing them in early 2016. However these seem to have been released under pressure since the SFLC had written a letter directly to the PMO complaining about the “unfair” protection offered under the 2015 guidelines. These guidelines could not hold water since they were against the legislative intent and had been formed without giving much thought. Since then, after extensive deliberations and several stakeholder meetings, the latest guidelines have recently been released on 30th June 2017 .

Major Changes

The guidelines of 2016 had placed the presence of “novel hardware” as a patentability requirement for software related inventions. One of the major changes brought about in the latest version is that this requirement has been removed as it was clearly against the intention of the legislature. Apart from that all examples of non-patentable inventions which were earlier given have been removed. It has also been clarified that systems for encoding, reducing noise in communications/ electrical/electronic systems or encrypting/ decrypting electronic communications shall not be regarded as mathematical methods and shall be considered patentable

What Remains the Same

As before, the guidelines focus on the substance of the claims over the form in which they have been worded. They also direct that for means + function claims, the means are to be defined with physical constructional features along with reference numerals to enhance the intelligibility of the claims. The structural features of those means are also to be disclosed in the specification. Guidelines for algorithms and business methods are also retained as is

Scope for More

However, technical effect and technical advancement have not been defined and neither have these terms explicitly been mentioned as patentability criteria. Suitable examples would have also been beneficial to aid understanding and clearly differentiate between what is patentable and what is not

 

 

Mid year IPO decision analysis

From January to June the IPO has disposed off 19 oppositions. Out of the 19 decisions, three are in relation to post grant oppositions and the remaining 16 are in respect of pre grant oppositions.

Out of the 16 decisions rendered in pre-grant oppositions, in nine cases either the applicant abandoned the case or the opposition was withdrawn. Similarly, out of the three decisions rendered in post-grant oppositions, in one case the applicant abandoned the case. For details see  Jan-June 2017.

For summary of the remaining 9 decisions (7 pre-grant and 2 post grant), wherein the Opposition grounds and Applicants/patentees submissions have been discussed in detail in the decision, refer: Pre grant Decisions Jan-June 2017and Post grant Opposition decision – Jan to June 2017 .

Electronic Patent Certificate

The process relating to  issuance of Patent certificates has been fully automated by the Indian Patent Office.

As per the notification of the Patent office, from 3rd July 2017 the patent certificates will be generated through an automated system after the patent is granted by the Controller and shall be made available to the applicants concerned or their authorized patent agents on record. The patent certificate so generated will be transmitted to the applicant concerned or his authorised patent agent on record on his email address recorded and would also be made available on the official website (www.ipindia.gov.in) along with status of the application concerned.

 

A new day for computer inventions – Novel hardware not a requirement anymore

The Indian patent office has published the revised guidelines for examination of Computer related inventions (CRIs). The guidelines, while still being silent on the technical effect, do away with the thrust on “novel hardware” feature, which comes as a breather after a long, dry spell.

Also summarized below are the new guidelines, which do not show any tangible shift from what was published earlier.

  • Novelty: For novelty the guidelines state that no matter disclosed before the date of priority is patentable. The guidelines rely on the Manual of patent practise for the same.
  • Inventive step: The guidelines rely on law laid down by Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries Ltd and F.Hoffman la Roche v Cipla for inventive step analysis. Essentially the steps for inventive step analysis are stated to be as follows:-
  1. Identify the “person skilled in the art”, i.e competent craftsman or engineer as distinguished from a mere artisan;
  2. Identify the relevant common general knowledge of that person at the priority date;
  3. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
  4. Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
  5. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of inventive ingenuity?
  • Industrial applicability: The guidelines state that the patent specification must disclose a practical application and industrial use for the claimed invention wherein a concrete benefit must be derivable directly from the description coupled with common general knowledge to meet this requirement. Mere speculative use or vague and speculative indication of possible objective will not suffice.
  • Sufficiency: The guidelines state that in cases of patent application concerning computer related inventions (CRIs), Sufficiency requirements are considered as fulfilled if the specification addresses the following:
  •  Each and every feature of the invention shall be described with suitable illustrative drawings.
  •  If the invention relates to “method”, the necessary sequence of steps shall clearly be described so as to distinguish the invention from the prior art with the help of the flowcharts and other information required to perform the invention together with their modes/means of implementation.
  •  The working relationship of different components together with connectivity shall be described.
  •  The desired result/output or the outcome of the invention as envisaged in the specification and of any intermediate applicable components/steps shall be clearly described.
  •  The best mode of performing and/or use of the invention shall be described with suitable illustrations. The specification should not limit the description of the invention only to its functionality rather it should specifically and clearly describe the implementation of the invention.
  • Not Patentability under Section 3(k): The guidelines discuss not patentability under section 3(k)in great length. The guidelines also state to be overriding the chapter of the Manual, containing provisions pertaining to section 3(k) of the Patents Act, 1970. The guidelines state as follows:-  
  • COMPUTER PROGRAMMES
  • The guidelines state that the invention should be analysed in substance to determine if it falls under the excluded category. If, in substance, claims in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium belong to the said excluded categories, they would not be patentable.
  • The exclusion should not be allowed to be avoided merely by camouflaging the substance of the claim by its wording.
  • 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 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 performing 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 programme per se. 
  • MATHEMATICAL METHODS
  • Method of calculation, formulation of equations, finding square roots, cube roots and all other similar acts of mental skill are, not patentable.
  • Similarly mere manipulations of abstract idea or solving purely mathematical problem/equations without specifying a practical application also attract the exclusion under this category.
  • Mere presence of a mathematical formula in a claim, to clearly specify the scope of protection being sought in an invention, may not necessarily render it to be a “mathematical method” claim.
  • Also, such exclusions may not apply to inventions that include mathematical formulae and resulting in systems for encoding, reducing noise in communications/ electrical/electronic systems or encrypting/ decrypting electronic communications.
  • BUSINESS METHODS
  • When a claim is “business methods” in substance, it is not to be considered a patentable subject matter. However, if the claimed subject matter specifies an apparatus and/or a technical process for carrying out the invention even partly, the claims shall be examined as a whole.
  •  However, mere presence of the words such as “enterprise”, “business”, “business rules”, “supply-chain”, “order”, “sales”, “transactions”, “commerce”, “payment” etc. in the claims may not lead to conclusion of an invention being just a “Business Method”, but if the subject matter is essentially about carrying out business/ trade/ financial activity/ transaction and/or a method of buying/selling goods through web (e.g. providing web service functionality), the same should be treated as business method and shall not be patentable.
  • ALGORITHMS
  • Algorithms in all forms including but not limited to, a set of rules or procedures or any sequence of steps or any method expressed by way of a finite list of defined instructions, whether for solving a problem or otherwise, and whether employing a logical, arithmetical or computational method, recursive or otherwise, are excluded from patentability.
  • COMPUTER PROGRAMMES
  • The computer programmes as such are not intended to be granted patent. The following are essentially not patentable:-
  • Claims directed at “computer programme products” / “Storage Medium having instructions” / “Database” / “Computer Memory with instruction” stored in a computer readable medium.
  • Claims directed at “computer programme products” / “Storage Medium having instructions” / “Database” / “Computer Memory with instruction” stored in a computer readable medium.

Chemtura’s Patent restored

The Bombay High Court’s division bench has set aside the order of the IPAB revoking Chemtura’s patent IN213608 and has directed the Controller of Patents to restore the patent on the e-register ( Order dated 19-06-2017 ).

IPAB had earlier revoked Chemtura’s Patent for non compliance of section 8 and lack of inventive step. Chemtura filed a writ against the decision in the Bombay High Court.

The facts of the case are as follows: –

  1. Uniroyal Chemical Company Inc. (the predecessor of Chemtura) filed a National Phase Patent Application being IN/PCT/2001/00752/MUM before Patent Office with respect to the invention titled ‘A Bearing Pad Assembly’
  2. IPO on 9th January, 2008 granted patent to Chemtura after examining the same
  3. Revocation Petition being ORA/14/2009/PT/MUM was filed before the Intellectual Property Appellant Tribunal (IPAB). Chemtura filed its counter Statement along with the Affidavit to the petition on 21st August, 2009
  4. On 27th August, 2009, the petitioner counsel sent a letter to IPAB seeking withdrawal of the revocation petition being ORA/14/2009/PT/MUM. On 12th October, 2009 the Registry on behalf of IPAB sent a letter calling upon petitioner to file a Miscellaneous Petition seeking withdrawal of the said revocation petition
  5. Thereafter on 7th October, 2010 a hearing on the said revocation petition came to be posted under the caption ‘FOR WITHDRWAL’. However, due to some administrative reasons the matter was adjourned to 1st June, 2011. On 1st June, 2011 the matter was again adjourned to 28th November, 2011.
  6. On 28th November, 2011 when the matter was posted for hearing the counsel for Petitioner submitted that he had oral instructions to argue the Revocation Petition being ORA/14/2009/PT/MUM and in light of the said submission IPAB directed the parties to argue the matter on merits
  7. On 26th May, 2012, Petitioner filed a Miscellaneous Petition seeking withdrawal of the said revocation petition and subsequently, on 11th June, 2012 amended and again filed another Miscellaneous Petition seeking unconditional withdrawal of ORA/14/2009/PT/MUM.

It was argued by Chemtura that the order revoking the patent was passed despite a Miscellaneous Petition being M.P No. 107 of 2012 filed by Party seeking revocation and is therefore not maintainable. It was also contended by Chemtura that once a revocation petition has been withdrawn the Vakalatnama executed in favor of the Advocate ceases and the application cannot be heard. The counsels of Chemtura also relied upon the decision of the Supreme Court in Shiv Prasad v. Durga Prasad [1975] 1 SCC 405] which observed that every applicant has the right to unconditionally withdraw his application and his unilateral act in that behalf is sufficient and that no order of the Court is necessary permitting him to withdraw the application. The Court may make a formal order disposing of the application as withdrawn but the withdrawal is not dependent on the order of the Court. The act of withdrawal is complete as soon as the applicant intimates to the Court that he withdraws the application.

The Bombay High Court applied the ratio in Shiv Prasad (Supra) that the application should have been treated as withdrawn as of that date i.e on 25th July, 2009 and if not, at least as on date of filing Miscellaneous Petition namely 11th June, 2012. Bombay High Court further held that the IPAB erred in proceeding with the hearing in the face of the said application for withdrawal. In the circumstances, the Bombay High Court quashed the impugned order of the IPAB dated 24th August, 2012. Patent No. 213608 has also been restored on the Register of patent.

Chemtura’s Patent restored

The Bombay High Court’s division bench has set aside the order of the IPAB revoking Chemtura’s patent IN213608 and has directed the Controller of Patents to restore the patent on the e-register.

IPAB had earlier revoked Chemtura’s Patent for non compliance of section 8 and lack of inventive step. Chemtura filed a writ against the decision in the Bombay High Court.

Stay tuned for details!