The Indian Patent Office (IPO) had released new guidelines for the examination of Computer Related Inventions (CRIs) for patentable subject matter determination in June 2013. The aim behind the guidelines was to “foster uniformity and consistency” in the examination of patent applications for CRIs pursuant to the Patents Act, 1970. The guidelines did not constitute any rule making.
The said Act lays down the patentable subject matter requirements for CRIs under Sections 3(k)-3(n). Specifically, Section 3(k) provides that a mathematical or business method or a computer program per se or algorithms would not be considered as inventions under the Act and thus would not be patentable.
Such a requirement is, in form, very similar to the patentable subject matter requirement laid down in the laws of other developing and developed countries. Also, as in other countries, the application of the provisions related to CRI to determine patentability has been a subject of intense debate in India. In the absence of any general legally accepted definition of the terms used in Section 3(k)-(n) either in the Act or by way of case law, such as mathematical method, business method, computer program per se, and algorithms, there has been some subjectivity in the interpretation and application of these Sections in the patent examination process. To help bring in objectivity, the IPO published the draft guidelines.
On formalization, the guidelines would serve as a tool to streamline the examination process and bring in clarity and certainty for all stakeholders. Further, the IPO invited comments from the public, including the stakeholders, so that their views could be taken into account beforethe guidelines’ formalization. This initiative of the controller general’s office has been applauded as a step in the right direction. The IPO has received a number of comments and is considering the feedback
The draft guidelines attempt to address a number of key issues by defining some of the terms used in Sections 3(k)-3(n), providing requirements to be met for an invention to qualify as patentable subject matter, and providing examples constituting a negative list, i.e., not patentable inventions. However, in doing so, the draft guidelines tend to adopt an approach that is restrictive in terms of what would be patentable. Particularly, the interpretation of algorithms and computer program per se as laid down in the draft guidelines has been widely commented upon and debated.
For the definition of the term algorithms, the guidelines have relied upon the Concise Oxford Dictionary (Tenth Edition). Herein, an ‘algorithm’ is defined as “a process or set of rules to be followed in calculation or other problem–solving operations, especially by a computer”. However, most inventions are directed towards solving one or more problems in the prior art. Thus, many usual methods can be understood as steps or rules to be followed to solve a problem in the prior art and would fall under the above definition of algorithm, irrespective of whether a computer is used or not. Hence, such an overly broad definition of algorithm would bring in unwarranted inconsistencies in establishing patentability.
In addition, this restrictive approach would deprive many legitimate and worthy inventions from the benefits of patent protection.
For the definition of computer programs per se, the guidelines have considered the definition of computer program as provided in the Copyright Act 1957 and the definition of per se as provided in the Oxford Advanced Learners’ Dictionary. The guidelines state that a computer program loaded on a general purpose computer or a known hardware would not be patentable. According to the guidelines, the CRI would not be patentable unless the hardware being used is new. Thus, even if the combination of hardware and computer program solves a technical problem, other than that of business method or mathematical method, it will be barred from patentability since the invention uses a known hardware. Further, the guidelines state that computer program products, such as computer readable media, would also fall under the ambit of computer program per se.
This interpretation is inconsistent with the legislative history and evolution of Section 3(k).Under Section 3(k), the phrase computer program per se should refer to a set of instructions by itself or computer program by itself. Thus, while the code or the computer program by itself may be subject matter of copyright protection and not patent protection, the functionality that is performed by the code and the system that provides the functionality should be a matter of patent protection. This interpretation is consistent with the Joint Parliamentary Committee’s (JPC) report on the Patent (Second Amendment) Bill 1999, which clearly indicated the intent to differentiate between standalone computer programs, i.e., “computer programs per se”, and inventions implemented by a computer program on general purpose hardware, such as a general purpose computer.
The JPC report further stated that it is not the intention of the legislature to deny patents to computer programs as long it is includes something that is ancillary to them. The report is also in line with judicialinterpretation of computer program as ones adopted by the EPO and the UK Intellectual Property Office, as well as patent offices of other developed and developing countries.
The industry has responded in one voice against the restrictive interpretation proposed by the IPO. NASSCOM, an association of small and large Indian software companies, also raised concerns that the proposed guidelines will be a serious setback to the competitive advantage of the Indian software industry in the international market.
It is commendable that the feedback from the industry, the IP professionals, and other stakeholders has been received well by the IPO and the IPO has shown its willingness to look into the JPC report recommendations to interpret the scope of computer program per se.
The software Industry in India has grown by leaps and bounds over the last two decades. It registered an aggregated revenue of USD 108 Billion in FY2013 with exports exceeding USD 75 billion as per Nasscom’s Strategic Review 2013. A number of current developments in the software technology area are related to making the software capable of providing functionalities that were earlier performed solely by the hardware, thereby making hardware development and changes unnecessary.
For instance, technologies related to virtualization, hardware agnostic software, platform agnostic software, and the like have resulted in greater efficiencies, more interoperability and reduced costs. Further, software technology is also being developed to improve other product functionalities and to reduce the costs for adoption of the software. Such developments in software technology also require technical ingenuity to result in faster, more efficient and more reliable systems with enhanced functionalities, even though the software may be executed by a general purpose computer. The Indian IT industry in particular is at the forefront of development of such software technologies.
In this context, it becomes even more important to provide adequate patent protection to CRI in India. Given the highly competitive and fluid business environment of today’s world, and the ease with which software technology can be copied, distributed and pirated, a lack of adequate patent protection would substantially reduce the incentive for the software industry to invest in innovation in India. On the other hand, by giving adequate patent protection to CRI, at par with that given to inventions in other areas of technology, there will be greater incentive for both Indian and foreign software players to innovate and bring challenging products into the Indian market. In particular, as the Indian software industry matures, it will stand to benefit from a patent regime that nurtures innovation in computer-related and software technologies.
The IPO has taken the commendable first step of issuing draft guidelines on examination of computer-related inventions for patentable subject matter and asking for comments and feedback from various stakeholders on the draft guidelines. In the present form, the draft guidelines take a restrictive approach towards CRI that may result in most innovations in the software industry falling outside the ambit of patentable subject matter. The draft guidelines need to address the requirements posed by the nature of current technological advancements in the software industry and provide an environment conducive to its growth.
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