The new Guidelines for Computer Related Inventions are a big win for FOSS in India!

Access to Knowledge

Anubha Sinha

23 February 2016

India is one of the few countries which permits patenting of software – a monopolization that has only benefited established corporations and largely throttled innovation in the software industry, worldwide. CIS has consistently advocated against patentablity of software and in a major victory last week, software patenting in India died a little more. This happened via the newly issued Guidelines for the Examination of Computer Related Inventions, which introduces a new test to restrict software patenting – in essence the same legal test that CIS had been proposing since 2010. This post highlights the new test and other noteworthy changes in the Guidelines.

Whenthe Guidelines for examination of Computer Related Inventions(“2015 Guidelines”) were released last year, it became obviousthat they would have an adverse impact on innovation in the Indiansoftware industry. Further, the 2015 Guidelines were legallydefective since they ran counter to the object of Section 3(k) of thePatents Act, 1970, which is to unconditionally exclude mathematicaland business methods, computer programs per se, and algorithms frompatentable subject matter. To stop and prevent egregious harms, civilsociety organisations collectively wrote to the Prime MinistersOffice flagging off the defects and requested for a recall of theGuidelines. InDecember 2015, the Indian Patent Office promptlyrecalled the 2015 Guidelines and held a consultation to discussthe concerns raised in the letter.

Basedon submissions by various stakeholders, the Patent Office released anewset of Guidelines(“Guidelines”), which are not only astaggering improvisation from all previous versions, but alsointroduce a new three step test to determine applicability of section3(k), an area of Indian patent law that has been notoriously full ofuncertainties:

5.Tests/ Indicators to determine Patentability of CRIs (“ComputerRelated inventions”):

Examinersmay rely on the following three stage test in examining CRIapplications:

(1)Properly construe the claim and identify the actual contribution;

(2)If the contribution lies only in mathematical method, business methodor algorithm, deny the claim;

(3)If the contribution lies in the field of computer programme, checkwhether it is claimed in conjunction with a novel hardware andproceed to other steps to determine patentability with respect to theinvention. The computer programme in itself is never patentable. Ifthe contribution lies solely in the computer programme, deny theclaim. If the contribution lies in both the computer programme aswell as hardware, proceed to other steps of patentability.

CIShad proposed the exact same test in its earliersubmissions(2010) to the Patent Office, albeit worded differently. Wesubmitted:

“Wepropose a new part to the above test to make the clause clearer. TheManual should specify that “the computer programme portions of anyclaimed invention should be treated as if it were covered by priorart and patentability should thus be determined with respect to theother features of the invention”. This way, we can ensure that aninvention which merely uses or implements a computer programme is notgranted patent on the basis of the inventiveness of the computerprogramme perse.”

Further,the Guidelines also recognise that CRIs may fall under sections 3(k), 3(l), 3(m) and 3(n):

2.2. The Patents (Amendment) Act, 2002 also introduced explicit exclusions from patentability under section 3 for CRIs as under:

3(k)a mathematical or business method or a computer programme per se oralgorithms;

(l)a literary, dramatic, musical or artistic work or any other aestheticcreation whatsoever including cinematographic works and televisionproductions;

(m)a mere scheme or rule or method of performing mental act or method ofplaying game;

(n)a presentation of information;

And thus CRIs as such cannot be patentable, if they fall in either of the abovementioned exclusions. Overall,the new Guidelines offer more clarity and stick to the Patents Act,1970s intention of disqualifying patentability of computerprogrammes per se. We will soon post a detailed analysis of the Guidelines. In the meantime, you may read CIS research on the subject in the section below.