New Guidelines for Computer Related Inventions

Recently, the Office of the Controller General of Patents, Designs and Trade Marks has come up with a new guideline to be followed when deciding on applications related to software and hardware related inventions for its officials. The new guidelines will replace the earlier guideline which invited criticisms and protests from some of the IT groups.

Objective

Patent offices across the world are facing the issue of patentability of Computer Related Inventions (CRIs). Creators of knowledge in the domain of CRIs are looking for appropriate protection of their IPRs. . This subject has grabbed the international attention in the recent past. There should be uniform examination guidelines/manuals for examination of patent applications to address the challenges of processing patent applications in the field of computer related inventions and related technologies. So, the Indian Patent Office has come up with guidelines to foster uniformity and consistency in examination of such applications, and also to bring clarity in terms of exclusions expected under section 3(k) of the Indian Patent Act to enable fast examination of patents related to CRIs.

Provisions under section 3(k) of Indian Patent Act

Section 3(k) of the Indian Patent Act provides that a mathematical or business method, or a computer programme per se, or algorithm, is not patentable unless embedded in hardware.

Salient features of the new guidelines for examination of CRIs

• The existing chapter of the manual of Patent Office Practice and Procedure, containing provisions pertaining to Section 3(k) of the Patent Act 1970 is left untouched. So, if the contribution of the invention lies only in computer program, the patent claim shall be denied by the examiner. It is held that the computer program in itself is never patentable. If such a contribution is received, then the examiners need to check whether it is claimed in conjunction with a novel hardware and then proceed with the other steps to determine patentability. This provision is expected to ensure that the applications for patents solely in the field of software are rejected and the applications claiming a novel hardware component along with software are accepted for examination.
• While examining the CRI applications, the examiners have to rely on three stage test, starting with construing the claim and identifying the actual contribution.
• If the contribution lies only in mathematical method, business method or algorithm, then the patent claim should be denied.

Implications

The Software Freedom Law Centre (SFLC), the iSPIRT (Indian Software Product Industry Round Table) and Knowledge Commons, which were protesting against the guidelines issued in august 2015, have hailed the new guidelines by saying that the new guidelines are in line with the spirit of Section 3(k) of the Patents Act and would ensure software patents are barred in the country. The previously released guidelines provided that some of the advancement in the software compared to the prior art could get a patent. This could have resulted in a flood of patents being granted in the field of software, which would have adverse implications for the Indian IT industry, especially the start ups

Indian start-ups, product companies, research organizations, a range of academics, organizations like Society for Knowledge Commons, Free Software Movement of India, which are at the forefront of innovation, have welcomed the guidelines.

Criticism

The criticism for the new guidelines have come from the legal fraternity who fears that the new guidelines would result in less patent litigations and thus resulting in a loss of business, and from those multinational corporations (MNCs) with business models based on proprietary software. Their criticisms does not find merit as the world at large have already concluded that patents does not make sense in the world of software.

About Open Source Software

Open source software (OSS) is computer software whose source code is available for modification or enhancement by anyone. The copyright holder provides the rights to study, change, and distribute the software to anyone and for any purpose. Technologies which we are using in our day-to-day lives like web browsers, Linux-based mobile phones, Facebook, set-top boxes, Twitter etc., are based on open source. The OSS does not rely on patent protection. Even Apple uses open source at its core, and the irony is that those companies which uses Linux have opposed the new guidelines, while the Linux foundation itself does not support patents.

Why patent free open source software is important?

Lack of distraction on account of patents will offer conducive environment for innovations in India. Many innovations have the potential to address the problems faced by the Indian economy. For example, the government-funded SHAKTI processor programme at IIT-Madras works to replace proprietary processors by creating an open-source mobile and server processors. The existence of the web is attributed to CERN, the European Organization for Nuclear Research, which committed the Web’s fundamental technologies, including initial Web-serving and Web-browsing programmes, to the public domain. The freely available scripting languages such as Perl and PHP are behind the various open-source foundations like the Mozilla, Linux, Apache, Facebook, eBay, LinkedIn, Tumblr and various other start-ups.

Endnotes

Given the amount of litigation that the software patents have created in the US, the new CRI guidelines, which is very much in line with Section 3(k) of the Patents Act 1970 is a wise move taken by the Indian Patent Office to encourage the business of innovation. The guidelines portray the importance India attaches on the innovation economy.