A recent circular by the Patent Office on issues relating to biological resources and patenting may come as a reprieve for patent applicants using biological materials from India in their inventions.
Section 6(1) of The Biological Diversity Act, 2002 prohibits any person from applying for any intellectual property right in or outside India based on any research conducted on biological material obtained from India without obtaining permission from the National Biodiversity Authority (NBA) before making said application. The proviso to section 6 permits a person to apply for permission from the NBA after filing an application for a patent but before grant.
In view of said provision of The Biological Diversity Act, Controllers at the Patent Office have been raising multiple, many-a-times unwarranted, objections relating to obtaining permission from the NBA w.r.t biological material from India. Delays on the part of the NBA in granting permission stall the grant of a patent. Permissions from the NBA and pending patent grants in view of the same have therefore, long been debated between the Patent Office and the stakeholders representing the patent applicants.
The Controller General of Patents, Designs & Trade Marks, Mr. O.P Gupta has actively taken up this issue and through an official notification, has provided instructions/guidelines to streamline the process relating to patent applications that deal with biological material from India. A synopsis of the notice is as follows:
- Controllers and Examiners have been directed to refrain from raising objections on obtaining approval from the NBA with respect to inventions which reside in:
- value added products and not the biological material
- bio-wastes which are generated after the economic use of the biological material is exhausted.
- biological material prepared synthetically
- The notice has clarified that approval from the NBA is not needed when the Applicant makes an unequivocal declaration that the biological material used in the invention is neither obtained nor sourced from India.
- The notice requires Examiners to mark applications involving the use of biological material as ‘NBA approval application’ in the examination module before sending the examination report to the Controller. If the Controller is not satisfied with the requirement regarding NBA permission he can unmark the application from said category by giving reasons thereto.
- Where all objections have been complied except submission of NBA approval, the Controller shall mark the application in the examination module as ‘NBA approval pending, but in order for grant’ and the system administrator will tag such cases so that the applications can be treated as disposed of by the Controller.
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)
- EXAMINATION PROCEDURE:
- Same as that for other subject inventions for:
- Inventive step
- Sufficiency of disclosure
- Formal requirements
- For the subject matter:
- Ascertain if CRI is of technical nature
- 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
- Judge substance of claims taking whole claim together and not in parts
- TERMS DEFINITIONS AND SCOPE:
- ‘Mathematical Methods’:
- Inventions that directly involve mathematical methods
- 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
- Computing / calculating machine constructed to carry out a method
- Encoding / Decoding method
- Encryption / Decryption method
- Method of simulation
- Not Allowed:
- Acts of mental skill
- Method of calculation
- Formulation of equations
- Finding square / cube roots
- Solving advanced equations
- ‘Business Methods’:
- Inventions that involve all activities related to transaction of goods / services in a commercial / industrial enterprise
- Mere usage of words like ‘enterprise’, ‘ business’, ‘business rules’, ‘supply-chain’, ‘order’, ‘ sales’, ‘transactions’, ‘commerce’, ‘payment’ do not imply CRI is a business method
- Claims that specify apparatus and / or technical process to carry out invention even partly
- Not Allowed:
- Claims that include unspecified means
- If claims relate to business method in substance
- Subject matter essentially about carrying out business / trade / financial transaction / selling goods through web
- ‘Algorithm’confined to its dictionary (Oxford) interpretation
- Set of rules to be followed to solve a particular problem
- Procedure / sequence of steps as a finite list of defined instructions
- Employs logical / arithmetical / computational method
- ‘Computer Programme Per Se’:
- ‘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
- ‘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:
- intention is not to reject grant to computer programs
- “certain other things ancillary thereto or developed thereon” over and above just a computer program allowed
- “things ancillary thereto” = things essential to give effect to a computer program
- “developed thereon” = improvement / technical advancement achieved by any development
- If computer programme not claimed by itself, then invention allowed
- Not Allowed
- Claims for computer programmes / set of instructions / routines in a specific language
- Claims for computer program products / storage medium having instructions / database / computer memory with instructions
- CRITERIA FOR TECHNICAL ADVANCEMENT
Subject matter should have:
- Technical contribution on a process outside the computer OR
- Operates at a level if the architecture of the computer OR
- Contribution is by way of change in the hardware or functionality of hardware OR
- Above mentioned contribution amounts to technical advancement OR
- Results in computer being made to operate in a new way OR
- Makes the computer into a more efficient or effective computer in case of program linked with hardware
- CRITERIA FOR PATENTABILITY
Subject matter should involve either:
- Novel hardware OR
- Novel computer programme with known hardware:
- goes beyond normal interaction between programme and the hardware
- affects a change in the functionality / performance of existing hardware
- capable of bringing further technical effect
- 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
- 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.