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

 

 

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Guidelines: Computer Related Inventions

The Indian Patent Office finalised and issued guidelines for Computer Related Invention(s) (CRIs) on 21st August,2015. They are guidelines for examination by IPO of patent applications in field of CRIs for uniformity and consistency in examination. Here is a brief summary of what the guidelines encompass.

CRI is a collective term used which encompasses se of computer / computer networks / programmable apparatus OR one or more features are realized wholly / partially by computer programme(s)

  1. EXAMINATION PROCEDURE:
    1. Same as that for other subject inventions for:
      1. Novelty
      2. Inventive step
  • Industrial applicability
  1. Sufficiency of disclosure
  2. Formal requirements
  1. For the subject matter:
    1. Ascertain if CRI is of technical nature
    2. Ascertain if CRI involves technical advancement compared to existing knowledge
  • Focus to be on underlying substance of invention and not on the form in which it is claimed
  1. Judge substance of claims taking whole claim together and not in parts
  1. TERMS DEFINITIONS AND SCOPE:
    1. ‘Mathematical Methods’:
      1. Inventions that directly involve mathematical methods
      2. Use of a mathematical formula — not necessary it a mathematical method
  • Mere abstract idea / solution to purely mathematical problem without any practical application not allowed
  1. Allowed:
    1. Computing / calculating machine constructed to carry out a method
    2. Encoding / Decoding method
    3. Encryption / Decryption method
    4. Method of simulation
  2. Not Allowed:
    1. Acts of mental skill
    2. Method of calculation
    3. Formulation of equations
    4. Finding square / cube roots
    5. Solving advanced equations
  1. ‘Business Methods’:
    1. Inventions that involve all activities related to transaction of goods / services in a commercial / industrial enterprise
    2. Mere usage of words like ‘enterprise’, ‘ business’, ‘business rules’, ‘supply-chain’, ‘order’, ‘ sales’, ‘transactions’, ‘commerce’, ‘payment’ do not imply CRI is a business method
  • Allowed:
    1. Claims that specify apparatus and / or technical process to carry out invention even partly
  1. Not Allowed:
    1. Claims that include unspecified means
    2. If claims relate to business method in substance
    3. Subject matter essentially about carrying out business / trade / financial transaction / selling goods through web
  2. ‘Algorithm’confined to its dictionary (Oxford) interpretation
    1. Set of rules to be followed to solve a particular problem
    2. Procedure / sequence of steps as a finite list of defined instructions
  • Employs logical / arithmetical / computational method
  1. ‘Computer Programme Per Se’:
    1. ‘Computer Programme’ taken from sec 2(ffc) from Copyright Act 1957: set of instructions expressed in any form, including machine readable medium, which are capable of causing a computer to perform a task or achieve a result
    2. ‘Per Se’ confined to its dictionary (Oxford) interpretation: “by itself” – to show that you are referring to something on its own rather than in connection with other things
  • Legislative Intent for Per Se: Joint Parliamentary Committee Report while introducing Patents (Amendment) Act, 2002:
    1. intention is not to reject grant to computer programs
    2. certain other things ancillary thereto or developed thereon” over and above just a computer program allowed
      1. things ancillary thereto” = things essential to give effect to a computer program
      2. developed thereon” = improvement / technical advancement achieved by any development
    3. If computer programme not claimed by itself, then invention allowed
  1. Not Allowed
    1. Claims for computer programmes / set of instructions / routines in a specific language
    2. Claims for computer program products / storage medium having instructions / database / computer memory with instructions
  1. CRITERIA FOR TECHNICAL ADVANCEMENT

Subject matter should have:

  1. Technical contribution on a process outside the computer OR
  2. Operates at a level if the architecture of the computer OR
  3. Contribution is by way of change in the hardware or functionality of hardware OR
  4. Above mentioned contribution amounts to technical advancement OR
  5. Results in computer being made to operate in a new way OR
  6. Makes the computer into a more efficient or effective computer in case of program linked with hardware
  1. CRITERIA FOR PATENTABILITY

Subject matter should involve either:

  1. Novel hardware OR
  2. Novel computer programme with known hardware:
    1. goes beyond normal interaction between programme and the hardware
    2. affects a change in the functionality / performance of existing hardware
    3. capable of bringing further technical effect
  1. EXAMPLES OF ALLOWABLE CRIs:
  • Method for granting access to a computer-based object-Comprises of a memory card having program code processor, item of license information, symmetric key etc
  • Apparatus for eigenvalue decomposition and singular value decomposition of matrices in a wireless communications-Comprises of various hardware elements such as transmitters, receivers, controller, channel processor etc.
  • Method of controlling an electronic device with touch sensitive display- Involves displaying graphical items and performing an action dependent on identity of these Computer implemented method for identifying required information in a document
  • Method for providing a network bridge in UDP multicast traffic-Executed by a multicast repeater on a host computer system
  • Method for estimating time required to download application programs on a wireless device in a wireless network-Involves wireless device, wireless network, data files and server etc
  • Method for tracking a mobile electronic device using instant messaging
  • Method of creating tunnel end points for a IPv6 over IPv4 tunnel using a SNMP
  1. EXAMPLES OF NON-ALLOWABLE CRIs:
    • Method of scoring compatibilities between members of a social network.

Such a method further involves estimating probability and dividing estimated probabilities from the resultant product. This Patent Office held it to be falling under ‘business method’ and ‘mathematical method’ and ‘scheme/predefined set of rules’

  • A method of operating a computer network search apparatus for generating a result list of items representing a match with information entered by a user

Such a method comprises a database where several items are stored, when each item contains information to be sent to a user which is associated with at least one keyword, an information provider and a bid amount. The Patent office and then the IPAB held it under the category of ‘method of doing business. It held that it was a technically smarter way of doing business but it increases the chance of the higher bidders being close to the top. The IPAB also held that the nature of the invention also passes the test of time and is still a method of doing a business.