Patentable or not? : IPO gives a reasoned order.

The Controller of Patents A.RAJA, rejected an application of Yahoo, numbered 1833/CHE/2007, directed to method of scheduling and displaying an online presence status of a user of an instant messaging application. In particular, presented claim 1 recites:

A method of scheduling and displaying an online presence status of a user of an instant messaging (IM) application, comprising: setting, by presence management server (PMS) (500)containing a processor and a memory, a routine online schedule of the user, the routine including a start time, an end time, a time zone, and a routine status that indicates a preference of the user to appear online or offline in the IM application between the start time and the end time; determining, by the presence management server (PMS), the online presence status of the user in the IM application as user and a current time, wherein the online presence status is set to be equal to the routine status when the current time is between the start time and the end time for said time zone regardless of the user being online or offline in the IM application, wherein the online presence status is not equal to the routine status when the current time is not between the start time and the end time, wherein the user appears online in the IM application if the user desires to appear online according to the routine status even if the user is offline in the IM application, the routine online schedule of the user being stored to enable the determining of the online presence status of the user; and displaying, by the presence management server PMS),the determined online presence status of the user in an IM control panel (350) of other users.

The claims have been rejected under section 3(k) and 3(n). The reasons provided by the Controller are as follows:-

  • Independent claim 1 recites a presence management server (PMS) for performing various operations (setting, determining, displaying) related to scheduling and displaying an online presence status of a user of an instant messaging (IM) application. The steps of setting, determining, displaying have been held to be nothing but computer algorithmic steps for giving a solution to the detailed problem related to scheduling an displaying an online presence status of a user of an instant messaging application.
  • The Controller has held that the algorithm related claims are even wider than the computer programmes claimed by themselves, as a single algorithm can be implemented through different programmes in different computer languages. 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. Even when the issue is related to hardware/software relation, (e.g., when the claims recite ‘processor is programmed to… or ‘apparatus comprising a processor and configured / programmed to…..) the expression of the functionality as a ‘method’, is judged on its substance.The independent claim 1 which seek to protect a method of scheduling and displaying an online presence status of a user of an instant messaging application clearly indicates that the subject matter intent to claim only the computer programming instructions.
  • The presence of hardware components such as a presence management server containing a processor and a memory are general purpose computer containing processor and a memory.
  • The Controller held that the independent claim 1 recites displaying the determined online presence status of a user in an IM control panel of other users. The claim further recites that the determination of the presence status is based on routine online schedule of the user and a current time, with the routine online schedule of the user being stored to enable the determining of the online presence status of the user. The displayed online presence reflects the status of the instance messaging system. Therefore, the present invention indicates that the presentation of information which fall under section 3(n) of the Patents Act.

 

CRI Guidelines in abeyance

In view of several representations received regarding interpretation and scope of section 3 (k) of the Patents Act 1970 (as amended), the Guidelines for Examination of Computer Related Inventions (CRls), issued on 21-08-2015 have been kept in abeyance till discussions with stakeholders are completed and contentious issues are resolved. The Indian Patent Office (IPO) has issued an office order in this respect.

In view of the above, the relevant chapter of the Manual of Patent Office Practice and Procedure, containing provisions pertaining to section 3 (k) of the Patents Act 1970 (as amended) [Section 3 defines what are not inventions within the meaning of the act and sub section (k) considers “a mathematical or business method or a computer programe per se or algorithms” as not an invention], shall continue to be applicable.