The fate of CRI after Revised Guidelines
The Indian Patent Office has come up with a revised set of guidelines for examination of Computer Related Inventions (CRI). The earlier one dated 21st August, 2015 had given a great bit of hope and found favor of the software industry wherein it included a “three step test” for determining patentability of CRI. Though that appeared to be a bit far-fetched considering it came from the Indian Patent Office. The reason for that is the fact that, such a step could mean that the Patent Office appeared to be treading into the territory of interpretation of the Indian Patent Act. As is, this liberty and authority lies only with the court of law or with any panel authorized to do so. The Patent Office doesn’t appear to be any of the two.
Nonetheless, there came a congregation of the stakeholders petrified that this meant doomsday for them and presented their fear to the authorities. Revised guidelines were eventually released by the Patent Office on 19th Feb 2016.
The inclusions and the matter published in the new guidelines. A similar “three step test” exists here albeit with a negative perception towards CRI. A side by side look at the guidelines is below:
While the earlier guidelines had a language that appeared more decisive and CRI favoring, the language in the revised guidelines, though unfavorable, appear looser as regards their assertiveness. To delve further, while the earlier guidelines used statements like “…the subject matter should involve either…”, the revised guidelines have statements like “Examiners may rely on the following three stage test…”.
It is understandable to a relevant person in the trade that the “guidelines” is a mere document to add more clarity towards aspects put forth in the Patent Act and the Manual, they may not be binding either on the Controllers or for that matter the appellate authority.
Coming back to the revised guidelines, it appears to prescribe tests which would negatively impact patentability of CRI. Elaborate explanation of the section on “Sufficiency of Disclosure” which tries to put forth a very important aspect when read in conjugation with the third test of patentability and more specifically “If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability”. What this combination could be construed to mean is, you may be patent eligible but you must have ample support in your specification. This would eventually mean that loosely drafted specification in support of CRI claims may find the going really tough.
This section also states that claims for algorithm are even wider than claims for computer programme and therefore claims for algorithm are excluded from patentability in all forms. The Revised Guidelines place a lot of emphasis on presence of novel hardware. It has further been mentioned that means plus function claims shall not be allowed.
Looking into the leading examples cited from various decided cases that appear to have been picked up from the Indian as well as some of the foreign jurisdictions, one may be bound to believe that the emphasis has been put on “non-patentability of CRI” rather than patentability.
A detailed look into the various sections of the revised guidelines appears to lead us to some of the below takeaways.
To add an extra pinch of clarity on the patentability of “A method implemented by a known device / hardware”, the method should be directed to a technical effect that is aimed to improve the working of the known device hardware itself.
Further to the above, if a device is claimed, in “means plus function” form, then such means should have been clearly defined in the specification with the help of physical constructional features.
To sum it all, there are varied opinions regarding the revised guidelines. The purpose of releasing the guidelines was initially to provide clarity on patentability of CRI, while the current version is directed towards describing and guiding us on what cannot be patented. In my view, most of us would be resorting to presenting cases in the same manner as we did pre Aug 2015. There might be some who might want to challenge it and others who would wait for the challenge to happen and then take sides. In essence the future of computer related inventions still remains challenging and as professionals we have to be ultra-careful in how the future drafts are prepared and presented.
The above writeup represents my views and are in no way to be treated as representative of the organisations that I may represent.