Patenting Computer Related Inventions – Indian Law

Computer Related inventions ( CRIs) occupy a major proportion of
applications examined by Patent Offices of various jurisdictions,
including India.

For instance, as per data hereunder, patents granted in India in the Computer and Electronics field have shown a strong upward trend, and in 2017-18, stood at third position.

( Source : Annual Report, 2017-18 of the Office of Controller General of Patents, Designs, Trademarks and Geographical Indications )

At the same time, CRIs present unique challenges with respect to patenting. Not only in India but worldwide.

A
contributory factor has been that the underlying technologies grow very
fast with boundaries that are more and more blurred by the day.
Information Technology (IT) now is more comprehensively termed as
Information and Communications Technology (ICT) and incorporates aspects
such as IoT ( Internet of Things), Blockchain, Machine Learning (ML),
Artificial Intelligence (AI) etc. Many inventors- including in the
Start-up space in India are trying to innovate using one or more of
these aspects as the building blocks of their innovations and filing
patent applications for same, hoping to get one/more patents and
capitalize on advantages that the patents can grant them.

To take
into account developments in this domain in India and other
jurisdictions as well as various concerns raised by different
stakeholders at different times, the Indian Patent Office (IPO) has been
issuing a series of guidelines on how a CRI (computer related
invention) may be evaluated while considering grant of patent .

The
first such “draft” guidelines were issued by IPO in June 2013. The
second in August 2015, which were revised in 2016. Finally, on June 2017
the guidelines were again revised. The June 2017 guidelines are
available at :

http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/Revised__Guidelines_for_Examination_of_Computer-related_Inventions_CRI__.pdf

And
it is well worth anyone interested in CRIs and their patentabilty with
respect to Indian law to have a look at above. These were applicable
“with immediate effect” so presently CRI applications are examined per
them by the Indian Patent Office.

In this context, it is interesting to look at a CRI application that was recently denied by the Indian Patent Office.

This
pertains to a patent application titled ‘Analyzing a query log for use
in managing category-specific electronic content’ for which the
Applicant is the social media behemoth – Facebook (FB). You can read
more about this event at many places, including, for example, at:

https://www.financialexpress.com/industry/technology/india-refuses-facebook-patent-regarding-caregory-wise-electronic-content/1629534/

While
this may not be the first refusal, either for FB or for many companies
and individuals involved in computer related inventions, and of course
will not be the last, it was of particular interest to me due primarily
the entity involved.

An examination of the prosecution history of
this patent application shows that while ‘substantially similar’
applications of the applicant had been granted a patent in US,
Australia, China and Japan, the Indian application was refused in end
Jun 2019 (filed in 2007). In July 2008, claims of the Indian application
were amended. The claims of any patent application serve as the
‘boundary’ of the invention and are considered for examination by the
Patent Office before grant of patent.

Essentially, the rejection
by the Indian Patent Office states that ‘claims define algorithmic
operations and thus are not allowable under sec. 3(k) of  the Patents
Act. They do not disclose any constructional or structural features. No
novel and/or inventive hardware features are defined in the claims.
Amendments effected in July 2008 are not allowable u/s 59(1) of the
Patents Act. In view of these, the invention as claimed falls within the
scope of sec. 3(k) of the Patents Act-1970 (as amended) and is
therefore not allowable. The application is, as such, refused a patent
u/s 15 of The Patents Act -1970 (as amended).’

Hereunder what the various section cited above actually state.

Section 3(k) states :

The following is not an invention within the meaning of this Act :

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

For more and to discuss please see:

https://lawforall.in/ipforum/Thread-Section-3-What-are-not-inventions

Section 59(1) states :

(1)
No amendment of an application for a patent or a complete specification
or any document relating thereto shall be made except by way of
disclaimer, correction or explanation, and no amendment thereof shall be
allowed, except for the purpose of incorporation of actual fact, and no
amendment of a complete specification shall be allowed, the effect of
which would be that the specification as amended would claim or describe
matter not in substance disclosed or shown in the specification before
the amendment, or that any claim of the specification as amended would
not fall wholly within the scope of a claim of the specification before
the amendment.

For more and to discuss please see:

https://lawforall.in/ipforum/Thread-Section-59-Supplementary-provisions-as-to-amendment-of-application-or-specification

and Section 15 states :

Where
the Controller is satisfied that the application or any specification
or any other document filed in pursuance thereof does not comply with
the requirements of this Act or of any rules made thereunder, the
Controller may refuse the application or may require the application,
specification or the other documents, as the case may be, to be amended
to his satisfaction before he proceeds with the application and refuse
the application on failure to do so.

For more and to discuss please see:

https://lawforall.in/ipforum/Thread-Section-15-Power-of-Controller-to-refuse-or-require-amended-applications-etc-in-certain-case

While
above is only a summary of a recent event, I hope it is of interest to
inventors in CRI space in India to get a little more understanding of
patentability of CRIs. That is not to say that CRIs are not being
granted patents in India (see data cited above ) but that the invention
and consequent drafting needs to carefully factor in and elaborate upon
aspects that will make it patentable in accordance with Indian laws.

All comments, experiences, additional inputs welcome ! Feel free to share and pass on to those you feel could benefit, thanks !

This post was also put at :

https://www.linkedin.com/pulse/patenting-computer-related-inventions-india-hardeep-sodhi

PS : For those interested in details:

Application US 11/171,506

Indian Patent Application No. : 228/DELNP/2007

Claiming priority to US Provisional Application 60/584,137
filed  July 1, 2004

PCT National Phase Application PCT/US05/23616

US Application : US 11/171,506

US granted patent :

https://patents.google.com/patent/US7379949B2/

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