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.

 

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Ericsson on a spree of favourable orders

Delhi High Court passed an interim injunction order in the ongoing case of Telefonktiebolaget LM Ericsson v. Lava International Ltd that prevents Lava from importing, exporting, manufacturing, and selling any mobile phones that use Ericsson’s 8 SEP patents and technology.The defendant is also barred from exporting the impugned goods. The Custom Authorities have also been directed to not release the impugned mobile phones if received from overseas countries under technology of suit patents of the plaintiff. 

The interim order, which is passed on merit, directed defendant to  deposit a sum of Rs.50 crores with the Registrar General of the Court by way of FDR as security amount on or before 20th June, 2016, the operation of interim order shall remain stayed till the final disposal of the main suit. In addition to that, the defendant was also asked to file the statement of accounts for the period of 2011 to 31st May, 2016 before Court by 10th July, 2016 and continue to file the same every quarterly till the final judgment is delivered in the main suit.

Section 3(k)

With regard to Section 3(k), the Court held that, the ultimate object of the invention is an efficient encoder rendering the synthesized speech quality in relation to radio resource needed for transmission is as high as possible. The Court noted that the speech quality is an effect perceptible by the humans and is not just as abstract entity. The judge pronounced that:

 “Prima facie, it appears that these inventions which have resulted in an improvement (technical advancement) in telecommunication technologies and have had a huge effect upon the manner in which these technologies function thereby resulting in practical implementation and actual physical representation Mere mention of an algorithm or a mathematical formula in a patent document should not be inferred to mean that the invention is nothing but an algorithm. The similar issue has already been dealt by this court in a suit filed against INTEX in great details wherein the arguments of doubtfulness were rejected. Thus, no different view is possible in the present case.”

The Court also held that product patents cannot be labelled as algorithm because they are not a set of instructions and are not theoretical in nature. The Court further held the defendant has failed to raise any credible challenge to the suit patents.

As regards the licence agreement, the Court held that the defendant has been consistently delayed execution of the agreement with the plaintiff and in such a case, unlike in trademark and copyright matters, the infringement ought to go in favour of the plaintiff. The Court also held that the plaintiff has been trying to correspond and negotiate with the defendant for the past 4 years and that itself is a huge factor that militates any grant of further time to the defendant , especially in cases of standard essential patents, where a patentee always endeavors to negotiate before filing for an injunction. Moreover, it was held that the fact that the defendant was aware of the plaintiff’s patents but did not challenge the validity goes in favour of injunction.

CRI cries in its grave

The guidelines for examination of Computer Related Inventions (CRI) published by the Indian Patent Office last year were kept in abeyance by the new Controller General in December 2015.

(To keep yourself abreast of the happenings in the CRI space so far, read here , here and here.)

After a stakeholder’s meeting on January 19, 2016, the new CRI guidelines were published on February 19, 2016.

The examination procedure of patent applications relating to CRIs remains the same as for other inventions to the extent of consideration of novelty, inventive step, industrial applicability and sufficiency of disclosure etc. The crux of the guidelines is as follows:

  • The guidelines describe the test to ascertain novelty and inventive step which is not limited to the examination of CRI alone but extends to all fields of technology. This has been covered by the search and examination guidelines.
  • The guidelines caution the use of mean cum function format in the claims. The ‘means’ mentioned in the claims shall clearly be defined with the help of physical constructional features and their reference numerals to enhance the intelligibility of the claims. The claims in means plus function form shall not be allowed if the structural features of those means are not disclosed in the specification. Should the invention be implemented by way of a computer program, such claims shall be rejected.
  • The substance of claims taking whole should be ascertained. The claims shall be denied patentability should they be claimed in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium fall under excluded categories. However, should the claims, taken as whole, do not fall in any of the excluded categories in substance, thee same would be allowed.
  • A mere presence of a mathematical formula in a claim, to clearly specify the scope of protection being sought in an invention, does not necessarily render it to be a “mathematical method” claim.
  • A mere presence of the words such as “enterprise”, “business”, “business rules”, “supply-chain”, “order”, “sales”, “transactions”, “commerce”, “payment” etc. in the claims does 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), would be treated as business method and will not be patentable.
  • Algorithms in all forms are excluded from patentability.
  • Computer programme per se are excluded from patentability. The guidelines have narrowed down the patentability in this aspect to checking whether the computer programme is claimed in conjunction with a novel hardware. The computer programme in itself is not patentable. If the contribution lies solely in the computer programme, it will not be allowed. It is pertinent to note here that the guidelines are silent on technical effect and technical contribution in this regard.
  • The guidelines cites examples of exclusions.

Should you wish to obtain an opinion on these guidelines and the impact that this would have on CRI, please contact us.

CRI: A crying need of the hour

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:- 
  1. The guidelines in the current form provide patenting of software and broaden the scope of Section 3(k);
  2. The guidelines allow software patents for writing codes which is a dangerous proposition.
  3. 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:- 
  1. 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.
  2. 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.
  3. 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.

  1. 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.

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.

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.