The fate of guidelines issued by the Indian Patent Office in respect of Computer Related Inventions (CRI) has been in a state of suspended animation until recently. The roller coaster ride that CRI guidelines have been through have been encapsulated as under:
- The draft CRI guidelines of 2013 were finalized after extensive feedback from all stakeholders and was put up on the Indian Patent Office website on 08th August, 2013.
- A meeting with the stakeholders on the draft CRI guidelines 2013 and the feedback received was held on 11th October, 2013. After almost two years, the guidelines were finalized on 21st August, 2015.
- On 15th September 2015, the Software Freedom Law Center (SFLC) made a representation to the Prime Minister of India with the following objections:-
- The guidelines in the current form provide patenting of software and broaden the scope of Section 3(k);
- The guidelines allow software patents for writing codes which is a dangerous proposition.
- The guidelines in the current form run counter to the objective under Section 3(k) which unconditionally excludes mathematical methods, business methods, algorithms and computer programs per se.
- SFLC also stated that the final guidelines of 2015 differ significantly from the draft guidelines of 2013 especially in the following key areas:-
- The mere use of mathematical formulae in a claim according to the 2015 guidelines would not necessarily render the claim as being a mathematical method, irrespective of whether the said claim cites a technical application. Thus, methods of encryption/decryption, encoding, decoding are mathematical methods and therefore should not be patentable. However, the patent office guidelines state to the contrary.
- Business methods: The CRI guidelines 2015 renders business methods as being patentable which are otherwise excluded in Section 3(k). According to the 2015 guidelines, just because a claim uses expressions like ‘enterprise’, ‘business’ etc. it is not rendered as being a business method and therefore the guidelines recommend that the patent application has to be seen as a whole in substance. This is impermissible.
- The 2015 guidelines, in relation to computer program per se, refer to the legislative intent behind the phrase ‘per se’. However, the 2015 guidelines overlook the evolution of Section 3(k) through the Amendment Bill 2005 and Amendment Ordinance, 2004. The current guidelines in Section 3(k) on computer program per se permits that CRIs may be patentable require:
- Novel hardware; OR
- Novel hardware with a novel computer program; OR
- Novel computer program with known hardware, which goes beyond the normal interaction with such hardware and effects a change in the functionality and/or performance of existing hardware.
The guidelines add that a computer program, which when running or loaded onto a computer, goes beyond the “normal” physical interactions between software and hardware and is capable of bringing further technical effect, may be patentable narrower the intended scope of Section 3(k).
This is not allowed as only novel hardware with software should be patentable.
- The aforesaid issues according to the SFLC would stifle innovation; the Government’s “Make in India” initiative; cause harm to the Indian industry and The Controller General clearly stated that if there is something contrary to law in the guidelines, he would not be reluctant to suspend and put them in abeyance and reconsider the same.
- The majority of the stakeholders were of the view that changes in the guidelines from time to time introduce uncertainty and is reflective of chaos and confusion with regard to the understanding of the provisions of law.
Anand and Annad made the following recommendations made before the Controller General:
- With the CRI guidelines a correct position was taken by the patent office after due consideration of all the recommendations of the stakeholders.
- That SFLC has already made a representation in 2013, written and oral and they were adequately represented.
- That the current guidelines did not in any way state that business methods or algorithms or mathematical methods are patentable.
- That the CRI 2015 guidelines clearly state that the patent office should focus on the underlying substance of the invention and not the form in which it is claimed while examining a CRI. This in any case ensures that a mathematical method, business method or algorithm will not be allowed even if they are camouflaged
- It was also pointed out that in sections 4.5.1 ; 4.5.2 of the guidelines relating to mathematical methods and business methods respectively, this issue that was raised by SFLC was taken care of and was clearly reflected in the language used which is that it substance, and not form, would determine the patentability of an invention under Section 3(k). It was only worded positively.
- The objection of SFLC that decoding, encoding, encryption, decryption techniques were nothing but mathematical methods was extensively discussed by providing examples. It was stated that if the invention is for a mathematical method, it is that it what is not patentable but a known mathematical method if used in a technical application or to solve a problem, the said method is being patentable as the invention is not in the mathematical method. Similar examples were given in the area of business methods and algorithms.
- In so far as section 5.1, is concerned SFLC was of the view that novel hardware is needed for an invention to be outside the purview of “per se”. The stake holders contested this position.
- The Controller General at the beginning of the meeting stated that India would not follow EP and UK practice/ law in relation to the Section 3(k), in view of the objection made by SFLC. However, it was pointed out that in para 119 of the Ericson vs. Intex case, it was clearly held that when the Bill of 1999 was referred to the JPC it was suggested by various experts and stakeholders that India should follow the EP/UK route and not completely exclude computer program patentability. The Court further held that the parliament excluded the aforesaid proposition and added the word per se in Section 3(k).
- It was brought to the attention of Controller General, para 120 of this judgment that states that if a computer program had a technical advancement and technical effect then it was patentable. It was therefore stated that if the judiciary has already interpreted a provision of law, we as stakeholders cannot modify or change this interpretation through administrative orders and guidelines.
- When SFLC was referring to the legislative intent including the debate in the Parliament on the 2004 ordinance, it was informed the Controller General that the stakeholders and Patent Office cannot step into the shoes of the legislature. Any reference to the legislative intent or JPC recommendation cannot be used to interpret Section 3(k) through the guidelines. It was informed to the CG that the JPC report and intent of the legislature has to be looked in by the Courts in India to interpret a provision of law as was done by the Hon’ble Supreme Court in the Novartis (Glivec) case for Section 3(k).
The stakeholders to get back to the Controller General by giving them negative examples by 24th January, 2016.