Apparently faced with criticism from some of the stakeholders, the Indian Patent Office has decided to keep in abeyance the new guidelines for the examination of computer-related inventions (CRIs).
The patent office in August this year had released fresh guidelines for the examination of CRIs, with the objective of providing uniform and consistent guidelines for the examination of patent applications in the space of CRIs and information technology.
The key ‘reform’ in the guidelines was the knocking out of some chapters in the manual of Patent Office Practice and Procedure, containing provisions pertaining to Section 3(k) of the Patents Act, 1970. Section 3(k) excludes mathematical methods or business methods or computer programme per se, or algorithms from patentability. The new norms were notified with immediate effect.
“ 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, issued on August 21, have been kept in abeyance till discussions with stakeholders are completed and contentious issues are resolved. In view of the above, the existing chapter of the manual of Patent Office Practice and Procedure, containing provisions pertaining to Section 3(k) of the Patents Act 1970, shall continue to be applicable,” said Om Prakash Gupta, controller-general of patents, designs and trade marks, in an office order.
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. This stand makes for a bar on a patent being granted for a computer software programme unless embedded with hardware. The protection for computer software programme is available as a copyright work which is generally considered a weak protection.
According to patent experts, the freshly-issued guidelines had been an attempt to bring uniformity in the patent office practice. While a section of the software industry had described it as a boost to the software industry, some have described the norms as an attempt to change the Patent Act without having legislative approval. The guidelines had broadly laid down some important pointers for the determination of excluded subject matter relating to CRIs under Section 3(k) of the Patent Act.
While examining CRI applications, the examiner has to confirm that the claims have the requisite technical advancement. The questions, which would be addressed by the examiner while determining the technical advancement of the inventions concerning CRIs, include whether the claimed technical feature has a technical contribution on a process which is carried on outside the computer, whether the claimed technical feature operates at the level of the architecture of the computer, whether the technical contribution is by way of change in the hardware or the functionality of hardware, and whether the claimed technical contribution results in the computer being made to operate in a new way.
Besides, the examiner has to, in the case of a computer programme linked with hardware, see whether the programme makes the computer a better computer in the sense of running more efficiently and effectively as a computer, and whether the change in the hardware or the functionality of hardware amounts to technical advancement.
“If the answer to any of the above questions is in the affirmative, the invention may not be considered as exclusion under Section 3(k) of the Patents Act, 1970,” the guidelines had said.
Debate
* According to patent experts, freshly-issued guidelines by the patent office in August had been an attempt to bring uniformity in the patent office practice
* While a section of the software industry had described it as a boost to the software industry, some have described the norms as an attempt to change the Patent Act without having legislative approval
