Examination Guidelines for Computer Related Inventions (CRI) kept in ABEYANCE

green-computer-1552038The final guidelines on CRI were published this year on 21st August 2015 and it took more than 2 years for the same be finalized, with the draft version of CRI guidelines being published on the website of Indian Patent Office on 28th June 2013 and the Indian Patent Office seeking feedbacks from various stakeholders prior to finalizing the same. Unfortunately however, vide a public notice dated 14th December 2015 the Indian Patent Office has placed the final guidelines under abeyance without clearly specifying reasons behind it. This article provides a closer picture of what has happened so far and why.

The final guidelines considered the view of Joint Parliamentary Committee (hereinafter JPC) formed in 2002 that recommended the insertion of phrase “per se” with computer programs as the basis for its suggestions. The JPC suggested insertion of the phrase “per se” to ensure patentability of computer programs that include certain other things, ancillary thereto or developed thereon. The intention behind the insertion of “per se” was not to reject computer related inventions if they are inventions.

In addition to the above, the final guidelines also considered the interpretation by superior body, i.e., Appellate Board, which in the landmark case of Enercon held that a technical process control associated with or directed to a computer set up to operate in accordance with a specified program (whether by means of hardware or software) for controlling or carrying out a technical process control such as the above, cannot be regarded as relating to a computer program per se or a set of rules of procedure like algorithms and thus are not objectionable from the point of view of patentability, more so when the claims do not claim, or contain any algorithm or its set of rules as such, but only comprise of some process steps to carry out a technical process or achieve a technical effect. It is to be noted here that the Appellate Board relied on the famous EP case, the VICOM Case.

The final guidelines further defined Algorithms as a set of rules or procedures or any sequence of steps or any method expressed by way of a finite list of defined instructions, whether for solving a problem or otherwise, and whether employing a logical, arithmetical or computational method, recursive or otherwise, are excluded from patentability.

Under the final guidelines, mere use of a mathematical formula in a claim to clearly specify the scope of protection being sought would not necessarily render the claim a mathematical method. The final guidelines further stated that mere usage of business related words, such as sales, commerce, and business in the claims should not lead to conclusion of subject being a Business Method.

It appears that several representations expressing apprehensions on the final guidelines were made to the Indian Patent Office after the publication of the final guidelines. In one such representation, a letter was sent to Prime Minister Modi (with cc to lots of concerned ministries) requesting an urgent recall of the final guidelines and any future guidelines to not interpret section 3(k) so broadly. Said letter alleged opening of a backdoor to software patenting. Said letter also alleged making way for grant of patents directed towards business methods, mathematical methods, and algorithms in case of technical application despite of absolute bar on these categories.

The letter interprets the legislative intent in view of (a) inclusion of a clarificatory phrase “other that its technical application to industry or a combination with hardware” behind “computer programs per se” in the ordinance in 2004 and (b) repealing of said clarificatory phrase in the Patents Amendment Act, 2005. While the actual legislative intent as per the record of the discussion of Group of Ministers was to merely impart clarity as opposed to widen the scope of patentability of software related inventions the letter provides a different color to the action of repealing of the said clarificatory phrase.

It is pretty unfortunate that despite bringing the aforesaid to the notice of the Indian Patent Office, and probably on the basis of which, the Indian Patent Office finalized the guidelines on CRI, the Pandora’s box has been un-necessarily re-opened in respect of already debated issue.

Till the time this issue is resolved, Chapter of the Manual of Patent Office Practice and Procedure will continue to be applicable in respect of Section 3(k) as per said public notice. It is expected that this move of the Indian Patent Office is going to earn them strong backlash because the final guidelines were largely seen as a step in right direction by most of the stakeholders. The interpretation of Section 3(k) should be borrowed from higher forums, such as the Appellate Board, High Courts, and the Supreme Court. For instance, the Hon’ble High Court of Delhi in the case of Ericsson vs Intex (See paragraph 120) has already held that an invention which has a technical contribution or has a technical effect and is not merely a computer program per se, the same is patentable.

Since the notice placing the guidelines in abeyance is silent on reasons, it is also contemplated amongst the stakeholders that the review of the guidelines could be in the direction of improving its contents. While the current guideline has majorly relied on the VICOM propositions, it is possible that legal propositions that have recently developed in Europe and beyond the VICOM era can be considered for inclusion. At the same time, it is also contemplated that the guideline in its present form does not instill the confidence of the growing Indian software product industry including a large number of Indian start-ups who design their IP protection strategies excluding India.

All the concerned stakeholders should therefore, seek clarity from the Indian Patent Office on abeyance of the final guidelines, and be ready to provide their suggestions and comments to the Indian Patent Office because we may be looking at revamped CRI guidelines in near future.