[CIS India, Link (CC-BY)] 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.
When the Guidelines for examination of Computer Related Inventions(“ 2015 Guidelines”) were released last year, it became obvious that they would have an adverse impact on innovation in the Indian software industry. Further, the 2015 Guidelines were legally defective since they ran counter to the object of Section 3(k) of the Patents Act, 1970, which is to unconditionally exclude mathematical and business methods, computer programs per se, and algorithms from patentable subject matter. To stop and prevent egregious harms, civil society organisations collectively wrote to the Prime Minister’s Office flagging off the defects and requested for a recall of the Guidelines. In December 2015, the Indian Patent Office promptly recalled the 2015 Guidelines and held a consultation to discuss the concerns raised in the letter.
Based on submissions by various stakeholders, the Patent Office released a new set of Guidelines(“Guidelines”), which are not only a staggering improvisation from all previous versions, but also introduce a new three step test to determine applicability of section 3(k), an area of Indian patent law that has been notoriously full of uncertainties:
5. Tests/ Indicators to determine Patentability of CRIs (“Computer Related inventions”):
Examiners may rely on the following three stage test in examining CRI applications:
(1) Properly construe the claim and identify the actual contribution;
(2) If the contribution lies only in mathematical method, business method or algorithm, deny the claim;
(3) If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. 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.
CIS had proposed the exact same test in its earlier submissions(2010) to the Patent Office, albeit worded differently. We submitted:
“We propose a new part to the above test to make the clause clearer. The Manual should specify that “the computer programme portions of any claimed invention should be treated as if it were covered by prior art and patentability should thus be determined with respect to the other features of the invention”. This way, we can ensure that an invention which merely uses or implements a computer programme is not granted patent on the basis of the inventiveness of the computer programme per se.”
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 or algorithms;
(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
(m) a mere scheme or rule or method of performing mental act or method of playing game;
(n) a presentation of information;
And thus CRIs as such cannot be patentable, if they fall in either of the above mentioned exclusions. Overall, the new Guidelines offer more clarity and stick to the Patents Act, 1970’s intention of disqualifying patentability of computer programmes 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.
CIS’ Research and Submissions against Software Patenting
Over the past years, CIS has produced research and consistently made submissions advocating the roll- back of software patenting:
CIS’ submission to Indian Patent Office on Examples of Excluded Patentable subject-matter under Section 3(k) for incorporation in the yet-to-be-released Guidelines for Computer Related Inventions, 2016