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All Posts | Jul 06,2017

Revised CRI Guidelines – Ambiguity replaces certainty

The Controller General of Patents, Designs and Trademarks has published the modified Guidelines for Examination of Computer Related Inventions (CRIs) by office order dated 30-6-2017. The revised Guidelines have done away with the three-stage test to determine patentability of CRIs. This section was intended to provide the examiners a clear method to examine patent applications. The Guidelines have also removed a set of fifteen illustrative examples of non-patentable claims – a move that could lead to more ambiguity, grant of irregular patents and ensuing litigations. There aren’t many other substantive changes, save for the section on mathematical methods, where language has been added to dilute the Patent Act’s blanket exclusion of mathematical methods from patentable subject matter.

The new Guidelines seem to be a compromise intended to please the interests of patent lawyers and firms that thrive on uncertainty. However, it is heartening nonetheless to note that the patent office has withstood the onslaught of these vested interests and has refrained from making major changes in the guidelines that would have resulted in opening the floodgates for irregular software patents.

 The table below summarises the notable changes in the Guidelines.

2017 Revised Guidelines 2016 Guidelines
4.3. Industrial Applicability 

 

In patent law, industrial applicability or industrial application is a patentability requirement according to which a patent can only be granted for an invention which is capable of industrial application, i.e. for an invention which can be made or used in some kind of industry.It has been defined in section 2(1)(ac) of Indian Patents Act, 1970 as follows:

“capable of industrial application”, in relation to an invention, means that the invention is capable of being made or used in an industry;

The requirement of workability and usefulness are both connected to the requirement of industrial applicability. If an invention is not workable, it means that it is also not industrially applicable. The patent specification must disclose a practical application and industrial use for the claimed invention wherein a concrete benefit must be derivable directly from the description coupled with common general knowledge. Mere speculative use or vague and speculative indication of possible objective will not suffice.

4.3. Industrial Applicability

 

In patent law, industrial applicability or industrial application is a patentability requirement according to which a patent can only be granted for an invention which is capable of industrial application, i.e. for an invention which can be made or used in some kind of industry.It has been defined in section 2(1)(ac) of Indian Patents Act, 1970 as follows:

“capable of industrial application”, in relation to an invention, means that the invention is capable of being made or used in an industry;

Industry herein is to be understood broadly having any useful and practical activity while excluding intellectual or aesthetic activity.

Claims relating to “Method of playing games” and “computer programming languages” are not considered to be industrially applicable. A method for effecting introductions with a view to making friends is not industrially applicable even though it could be carried out by a commercial enterprise.

The requirement of workability and usefulness are both connected to the requirement of industrial applicability. If an invention is not workable, it means that it is also not industrially applicable. The patent specification must disclose a practical application and industrial use for the claimed invention wherein a concrete benefit must be derivable directly from the description coupled with common general knowledge. Mere speculative use or vague and speculative indication of possible objective will not suffice.

The determination of industrial applicability in case of CRIs is very crucial since applications relating to CRIs may contain only abstract theories, lacking in industrial application.

 

[Highlighted portions have been removed from the Revised Guidelines.]

4.4. Sufficiency of Disclosure:

 

4.4.1. Fully and particularly (What):

  1. If the patent application relates to apparatus/system/device i.e. hardware based inventions, each and every feature of the invention shall be described with suitable illustrative drawings. If the invention relates to ‘method’, the necessary sequence of steps shall clearly be described so as to distinguish the invention from the prior art with the help of the flowcharts and other information required to perform the invention together with their modes/means of implementation.
  2. The working relationship of different components together with connectivity shall be described.
  3. The desired result/output or the outcome of the invention as envisaged in the specification and of any intermediate applicable components/steps shall be clearly described.
4.4. Sufficiency of Disclosure:

 

4.4.1. Fully and particularly (What):

  1. If the patent application relates to apparatus/system/device i.e hardware based inventions, each and every feature of the invention shall be described with suitable illustrative drawings.If these system/device/apparatus claims are worded in such a way that they merely and only comprise of a memory which stores instructions to execute the previously claimed method and a processor to execute these instructions, then this set of claims claiming a system/device/apparatus may be deemed as conventional and may not fulfil the eligibility criteria of patentability. If, however, the invention relates to ‘method’, the necessary sequence of steps should clearly be described so as to distinguish the invention from the prior art with the help of the flowcharts and other information required to perform the invention together with their modes/means of implementation.
  2. The working relationship of different components together with connectivity shall be described.
  3. The desired result/output or the outcome of the invention as envisaged in the specification and of any intermediate applicable components/steps shall be clearly described.

 

[Highlighted portions have been removed from the Revised Guidelines.]

4.4.4. Form and substance:

The sub-section 3(k) excludes a mathematical or business method or a computer programme per se or algorithms from patentability. While the judgment of mathematical methods or business methods is comparatively easier, it is the computer programme per se or algorithms related inventions that require careful consideration of the examiner. Computer programmes are often claimed in the form of method claims or system claims with some ‘means’ indicating the functions of flow charts or process steps. The algorithm related claims are even wider than the computer programmes claimed by themselves as a single algorithm can be implemented through different programmes in different computer languages. If, in substance, claims in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium belong to the said excluded categories, they would not be patentable.

Even when the issue is related to hardware/software relation, the expression of the functionality as a ‘method’ is to be judged on its substance. It is well-established that, in patentability cases, the focus should be on the underlying substance of the invention, not the particular form in which it is claimed. The Patents Act clearly excludes computer programmes per se and the exclusion should not be allowed to be avoided merely by camouflaging the substance of the claim by its wording.

4.4.4. Form and substance:

 

The sub-section 3(k) excludes a mathematical or business method or a computer programme per se or algorithms from patentability. While the judgment of mathematical methods or business methods is comparatively easier, it is the computer programme per se or algorithms related inventions that require careful consideration of the examiner. Computer programmes are often claimed in the form of algorithms asmethod claims or system claims with some ‘means’ indicating the functions of flow charts or process steps. The algorithm related claims are even wider than the computer programmes claimed by themselves as a single algorithm can be implemented through different programmes in different computer languages. If, in substance, claims in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium belong to the said excluded categories, they would not be patentable.

Even when the issue is related to hardware/software relation, (e.g., when the claims recite ‘processor is programmed to… or ‘apparatus comprising a processor and configured / programmed to…..) the expression of the functionality as a ‘method’, is judged on its substance. It is well- established that, in patentability cases, the focus should be on the underlying substance of the invention, not the particular form in which it is claimed. The Patents Act clearly excludes computer programmes per se and the exclusion should not be allowed to be avoided merely by camouflaging the substance of the claim by wording (e.g. different sub-routines are performed in different physical locations such as processors will not suffice).

 

[Highlighted portions have been removed from the Revised Guidelines.]

4.5. Determination of excluded subject matter relating to CRIs:

 

4.5.1. Claims directed as “Mathematical Method”:

Mathematical methods are a particular example of the principle that purely abstract or intellectual methods are not patentable. Mathematical methods like method of calculation, formulation of equations, finding square roots, cube roots and all other similar acts of mental skill are therefore, not patentable. Similarly mere manipulations of abstract idea or solving purely mathematical problem/equations without specifying a practical application also attract the exclusion under this category.

However, mere presence of a mathematical formula in a claim, to clearly specify the scope of protection being sought in an invention, may not necessarily render it to be a “mathematical method” claim. Also, such exclusions may not apply to inventions that include mathematical formulae and resulting in systems for encoding, reducing noise in communications/electrical/electronic systems or encrypting/ decrypting electronic communications.

 

 

 

[Highlighted portions have been inserted into the Revised Guidelines. The added examples could cause patent applications on mathematical methods to be allowed if the applications describe a practical application. This is against the statutory provision that provides a complete exclusion in the case of mathematical methods.]

4.5. Determination of excluded subject matter relating to CRIs:

 

4.5.1. Claims directed as “Mathematical Method”:

Mathematical methods are a particular example of the principle that purely abstract or intellectual methods are not patentable. Mathematical methods like method of calculation, formulation of equations, finding square roots, cube roots and all other similar methods are therefore not patentable. However, mere presence of a mathematical formula in a claim, to clearly specify the scope of protection being sought in an invention, may not necessarily render it to be a “mathematical method” claim.

Some examples which will attract exclusion:

  • acts of mental skill. e.g. A method of calculation, formulation of equations, finding square roots, cube roots and all other methods directly involving mathematical methods like solving advanced equations of mathematics.
  • merely manipulates abstract idea or solves a purely mathematical problem without specifying a practical application.

 

 

 

 

[Highlighted portions have been removed from the Revised Guidelines.]

5. Replacement of Provisions of Manual

 

Chapter 08.03.05.10 of the Manual, containing provisions pertaining to section 3(k) of the Patents Act, 1970 shall stand deleted with coming into force of these Guidelines for examination of CRIs.

 

 

 

 

 

[The three-stage test for determining patent eligibility has been removed from the Revised Guidelines, and replaced with the above statement deleting Chapter 08.03.05.10 of the Manual of Patent Office Practice and Procedure.]

5. Tests/Indicators to determine Patentability of CRIs:

 

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.
6. Applicability of Guidelines

 

These Guidelines shall be applicable with immediate effect.

[Examples of claims that are not patentable, which would have been helpful for the examiners as well as the applicants, have been removed from the Revised Guidelines, and replaced with the above statement on immediate applicability of the Revised Guidelines.]

6. Illustrative examples of Claims which are not patentable

 

**This section contained 15 illustrative examples of claims which are not patentable**

Our previous blog-posts on the CRI Guidelines are available at these links:

All Posts | May 02,2016

Don’t listen to the IT giants: Eben Moglen

The Indian government has rightly rested its Digital India initiative on a series of measures to liberalise the economy. One of those measures of free-market wisdom, however, the usual government-cheering section suddenly seems to be irrationally against. The PMO will be receiving from the Department of Industrial Policy and Promotion (DIPP) on April 30 a report on the Patent Office’s Computer-Related Inventions Guidelines (CRI), in which parties who usually applaud free-market measures are horrified to discover that Section 3(k) of the Patent Act really does prohibit government-awarded monopolies in software, and that the controller of patents is implementing the statutory command.

Software patenting is not a requirement of TRIPs, or of any current international trade law. The controller’s new CRI guidelines actually implement a test for software per se — unpatentable owing to Section 3(k) — which is close to the "machine or transformation" test all-but-imposed by the US Supreme Court in a series of cases over the last five years, in all of which we were amici curiae, urging the court in its current direction.

Software patenting is not in the Indian national economic interest. "Software," as Bill Gates used to say, "is an IQ business". When non-Indian firms can get software patents in India, the effect is to hobble the Indian IQ advantage, by making what many talented Indian programmers could otherwise use to make new innovations in software the property of the non-Indian patenting company. As our organisation, SFLC.in, has shown in its research report on the subject, more than 90 per cent of software patents awarded in India, before the rectification imposed by the new guidelines, were issued to foreign corporates.

Indian software companies can and do patent their inventions abroad, thus actively competing in the market for government monopolies maintained in other countries. But as the US Supreme Court has moved the US patent system away from patenting pure software claims and software-enabled business method claims, permitting such claims to be perfected in India awards the US and other non-Indian companies an unfair advantage here. The persistent US unfairness found in the Super 301 designation, alleging supposed inadequacy in Indian "protection" of "intellectual property", is also clearly expressed in current demands by US industrial parties — softly but unmistakably backed by their government — that India reverse a course converging with the US’s own.

In the Regional Comprehensive Economic Partnership (RCEP) negotiations, too, Indian efforts to implement its own longstanding patent law, preventing foreign parties from using the patent system to hobble Indian advantages in software-making, have come under direct fire. Language proposed by the Japanese government would require India to repeal the CRI guidelines and modify or abandon Section 3(k), which makes algorithms and software per se unpatentable.

Software industry incumbents, including TCS and a sprinkling of other Indian firms among the phalanx of US giants, have been forecasting doom if the Patent Act is actually observed. Along with patent lawyers — to whom no limits on the applicability of patent law are ever welcome — they have been announcing the death of Digital India, unless they are instantly allowed to own it. But as many IIT luminaries and dozens of start-up entrepreneurs have publicly indicated to the Indian government in refutation of this chatter, the most important barrier to the growth of the burgeoning internet economy’s dynamic, inventive small firms is the uncertainty for potential investors caused by the possibility of patent attacks by incumbents against new market entrants.

Patent law is supposed to provide a limited-term commercial monopoly in return for the disclosure of inventions that would, in the absence of patent availability, be kept secret. This "bargain" has never made analytic sense for inventions made entirely of computer software. The idea of "free software", made by massive collaboration under rules allowing everyone to learn, understand, improve and share, has transformed the global software industry. Disclosure is now an inherent part of the process by which progress occurs, as it is in fundamental research in physics, chemistry or any other natural science.

Patenting software makes no more sense than patenting mathematics, which is why the Patent Act Section 3(k) says what it does. Patenting software is no more a part of the Digital India future than is patenting arithmetic. The government will wisely pay no heed to the blandishments of the incumbents.

This article was written by Prof. Eben Moglen for The Indian Express, published on April 30, 2016.

All Posts | Apr 26,2016

Joint letter to the Department of Commerce expressing concerns over software-patent-friendly clauses in the RCEP

Indian law on patentability of computer programmes is abundantly clear in that Section 3(k) of the Patents Act 1970 explicitly excludes computer programmesper se, mathematical methods and algorithms from patent protection. Moreover the recent Guidelines for Examination of Computer Related Inventions released by the Patent Office on February 19, 2016 ensure that patents are granted only to those inventions where a computer programme is claimed in conjunction with novel hardware. This eliminates the possibility of frivolous patents being granted in the field of software in India. However, recently it has come to light that the Regional Comprehensive Partnership Treaty (RCEP) presently being negotiated proposes a clause on patents in the area of computer programmes that will result in patents being granted in this field.

SFLC.in along with members of software industry, civil society, academia and other stakeholders, penned a joint letter to the Department of Commerce, Department of Industrial Policy & Promotion and the Controller General of Patents, Designs and Trade marks, expressing our concerns over the clauses contained in the RCEP. A copy of the joint letter is available here.

All Posts | Feb 23,2016

A quick history of CRI Guidelines in India

On February 19 2016 the Office of Controller General of Patents, Designs and Trade marks (Indian Patent Office or IPO) issued a revised set of Guidelines for Examination of Computer-Related Inventions ('CRI Guidelines)'. The Guidelines come two months after the previous CRI Guidelines, released on 21 August 2015, were put in abeyance following severe criticism from various stakeholders. The new Guidelines are now in line with the provisions of the Patents Act 1970 that exclude mathematical and business methods, algorithms and computer programmes per se from patentability.

With an aim to foster uniformity in the field of patents on computer related inventions, from time to time the Office of Controller General of Patents, Designs and Trade marks releases Manuals and Guidelines for Examination of Computer Related Inventions. The Guidelines do not constitute rule-making and are provided to assist the Examiner of such patent applications. They also provide that in case of a conflict between the Guidelines and the Patents Act 1970, the provisions of the Act will prevail. This post takes a look at the first Draft Guidelines that were released in 2013, the aftermath and the present rules as regards examination of computer related inventions.

Draft CRI Guidelines 2013

The first set of Draft CRI Guidelines were released by the IPO on June 28 2013 for consultation with stakeholders. The CRI Guidelines clarified that business methods, mathematical methods as well as algorithms are not patentable. However a new term "technical effect" was introduced in the CRI Guidelines in order to further explain "technical advancement" under Section 2(1)(ja) of the Patents Act.

Section 2(1)(ja) provides "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention now obvious to a person skilled in the art.

SFLC.in also submitted its comments to the IPO wherein we stated that there was no requirement to add a new term and this would amount to introducing a new term of art. The final version of these Guidelines was not released and in December 2014 a special "IPR Think Tank" constituted by the Department of Industrial Policy and Promotion (DIPP) released the National IPR Policy that proposed to "engage actively in negotiation of international treaties and agreements; to examine accession to some multilateral treaties which are in India's interest and become signatory to those treaties which India has de facto implemented to enable it to participate in their decision making process".

CRI Guidelines 2015

The second set of CRI Guidelines for examination of computer-related inventions was released by the IPO on August 21 2015. These Guidelines completely reversed the earlier position with respect to examination of computer programs and mathematical methods and by allowing such patents ran contrary to Section 3(k) of the Patents Act. On September 15 2015 SFLC.in led a group of civil society organizations, industry representatives and academicians to pen a joint letter to the Prime Minister's Office, the related ministries and the Indian Patent Office expressing concern over the CRI Guidelines, requesting therein for urgent steps to recall the Guidelines. The Government swiftly took note of the situation and within a week's time a letter to the IPO, requesting examination of the CRI Guidelines, was issued by the DIPP. In the following months IPO held consultations with SFLC.in as well as representatives from the industry and other civil society organizations. During these consultations held on October 21 2015, SFLC.in highlighted the legal issues with the CRI Guidelines 2015 and how allowing patents in the software area poses a direct threat to Indian software companies. We presented them with empirical findings that show the minuscule amount of patents granted to Indian entities in the field of software when compared with foreign entities. We also submitted alternative text to various clauses in the CRI Guidelines 2015.

The initial discussions yielded positive results and the CRI Guidelines 2015 were put in abeyance on December 14 2015 pending discussions with stakeholders and resolution of contentious issues. Instead the Manual of Patent Office Practice and Procedure (as modified on March 22, 2011) was to be followed while carrying out examination of computer-related patent applications.

CRI Guidelines 2016

An open consultation was organized by the IPO on January 19 2016 where SFLC.in and other stakeholders provided their comments and inputs on substantial legal issues in the Guidelines and suggested alternate examples and tests for the purpose of examination of computer related inventions. The new CRI Guidelines have been drafted taking into account such recommendations. Salient features of the Guidelines are:

  1. One of the main recommendations made by SFLC.in was the three-step test for determining the patentability of software-related inventions. This has been accepted by the IPO and what is easily one of the most crucial developments brought by the new Guidelines is the three-step test that provides:

  • Properly construe the claim and identify the actual contribution;

  • If the contribution lies only in mathematical method, business method or algorithm, deny the claim;

  • If the contribution lies in the field of computer programmes, check whether it is claimed in conjunction with 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.

  1. Inventive step

    The new Guidelines provide that the inventive step in any invention must be a feature that is not an excluded subject itself. For the purposes of interpreting 'technical advance' as provided under Section 2(1)(ja) the Guidelines state that 'that comparison should be done with the subject matter of invention and it should be found that the advance is not related to any of the excluded subjects'.

  2. Industrial applicability

    The new Guidelines provide explicitly that 'methods of playing games' and 'computer programming languages' and methods of effecting introductions with a view to making friends, although carried out by a commercial enterprise, are not considered industrially applicable. They state that patent specification must disclose a practical application and industrial use for the claimed invention wherein concrete benefit must be derivable from the description coupled with common general knowledge.

  3. Means plus function

    The 'means' for performing some function, mentioned in the claims, shall be clearly defined with the help of physical constructional features to enhance the intelligibility of the claims. The claims in means plus function form shall not be allowed if the structural features of those means are not disclosed in the specification. Further if the specification supports implementation of the invention solely by a computer program then in that case means plus function claims shall be rejected as these means are nothing but computer programmes per se.

  4. With respect to determination of excluded subject matter relating to CRIs, the new Guidelines provide that it is important to judge the substance of claims taking whole of the claims together. If the claims in any form such method/ process, apparatus/system/device, computer program product/ computer readable medium fall under excluded categories, they would not be patentable. However, if in substance, the claims, taken as a whole, do not fall in any of the excluded categories, the patent should not be denied.

  5. Examples: The IPO has also included the Controller's decisions, provided by SFLC.in, related to Section 3(k) as examples.

The CRI Guidelines 2016 are very much in line with Section 3(k) of the Patents Act 1970 and will ensure that India's software industry does not fall victim to the very common phenomena of 'patent thickets, trolls' as prevalent in countries like USA. The process followed suggests the importance this Government and Indian Patent Office places on the innovation economy.

All Posts | Feb 22,2016

Press Release: Indian Patent Office Says No to Software Patents

The Controller General of Patents, Designs and Trademarks has issued an order dated February 19, 2016 publishing the revised Guidelines for Computer Related Inventions. The current guidelines are in tune with the provisions in the Patents Act, 1970 (as amended).

Section 3(k) of the Patents Act that was included by an amendment in 2002 excludes mathematical methods, business methods, computer programmes per se and algorithms from the realm of patentable subject matter. Although an attempt was made to broaden the scope of patentability of software by an ordinance in 2004 and by an amendment in 2005, this was rejected by the legislature.

The Patent Office had earlier published the Guidelines on August 21, 2015. These guidelines were against the statutory provisions and could have resulted in a flood of patents being granted in the field of software. SFLC.in along with iSPIRT (Indian Software Product Industry Round Table) and Knowledge Commons led a group of civil society organisations, academicians and start-ups in writing a joint letter to the Prime Minister's Office, the concerned ministries and the Patent Office requesting to recall the Guidelines.

The Government and the Patent office quickly responded to the letter. The Controller, after listening to the views expressed by SFLC.in and Knowledge Commons at a meeting held on October 21, 2015, issued an order dated December 14, 2015 keeping the guidelines in abeyance. The Controller then held a public consultation at the patent office in Mumbai on January 19, 2016.

The 2015 guidelines could have resulted in making it difficult for software developers to innovate with expansion of scope of patentability in the field of software. Prasanth Sugathan, counsel at SFLC.in, who represented the organisation at the consultations said: "The legislature by limiting the scope of patentable subject matter in the field of software wanted our software professionals and industry to innovate and not be stifled by companies holding a stockpile of patents. We are grateful to the Government and the patent office for listening to our feedback and suggestions and preserving the freedom of our coders and entrepreneurs to innovate without shackles."

Mishi Choudhary, Executive Director, SFLC.in and Expert, Software Patent Group at ISPIRT said "This Government initially with its approach towards Net Neutrality and now with its stand on Software Patents has shown that it is betting big on the innovation economy and will not let anything hinder the freedom to innovate. We hope to continue to work with the Government and the Patent Office to ensure that innovation is encouraged and to limit the grant of irregular patents."

The patent office has accepted the three part test suggested by SFLC.in to determine the patentability of CRIs:

(1) openly 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.

Such a test will ensure that applications for patents in the field of software will be rejected and only genuine applications claiming a novel hardware component along with software will be eligible for patent protection.

For more information please contact:


Mishi Choudhary,
Executive Director, SFLC.in +1 917 325 8594 mishi-at-softwarefreedom-dot-org

Prasanth Sugathan,
Counsel, SFLC.in +91 90135 85902 / +91 94472 91565 prasanth-at-sflc-dot-in

All Posts | Dec 19,2015

CRI Guidelines kept in abeyance – #NoSoftwarePatents

On 14th December 2015, the Controller General of Patents, Designs and Trademarks, Mr. Om Prakash Gupta, ordered that the recently released 2015 "Guidelines for Examination of Computer Related Inventions (CRIs)" shall be kept in abeyance till discussions with stakeholders are completed and contentious issues with respect to the 2015 Guidelines are resolved (order available here). SFLC.in highly appreciates the efforts made by the Indian Patent Office in considering the feedback given by civil society organisations and the Indian software product industry. . This is a very welcome, albeit first, step taken by the Government towards ensuring that the Indian software industry continues to enjoy the freedom to innovate and is not shackled by irregular patents granted in the area of software.

The 2015 Guidelines, notified on August 21 2015, although ostensibly issued with the aim to foster uniformity and consistency in the examination of CRI applications, completely reversed the position in the 2011 Patent Manual and by allowing patents for computer programs and mathematical methods went against the provisions of Section 3(k) of the Indian Patents Act 1970. The 2015 Guidelines were severely criticized by software programmers and startups, who as a result of patents in the area of software would be at perpetual risk of infringing some patent or the other. Boundaries of protection claimed by software patents are often hazy and this results in patents in the software being most litigated.

On September 15 2015, SFLC.in along with several civil society organizations and citizens penned a joint letter (available here) to the Prime Minister of India expressing concerns over the 2015 Guidelines. The letter requested the PMO to initiate urgent steps to recall the 2015 "Guidelines for Examination of Computer Related Inventions, and also to ensure that any future guidelines on this subject are in tune with legislative intent of Section 3(k) of the Patents Act 1970. The Government quickly took note and in less than a week's time the Department of Industrial Policy & Promotion, Ministry of Commerce, issued a letter to the Controller General of Patents with a request to examine the 2015 Guidelines and take appropriate action in the matter. In the following months, the Indian Patent Office and Department of Electronics and Information Technology held consultations with SFLC.in as well as representatives from the industry and other civil society organizations. During these consultations SFLC.in highlighted the issues with software patents and how allowing patents in the software area poses a direct threat to Indian software companies. We also presented them with empirical findings that show the minuscule amount of patents granted to Indian entities in the field of software when compared with foreign entities (about 3.55 % in 2009-10 and 3.76 % in 2010-11).

The initial discussions with the patent office have yielded positive results as the 2015 Guidelines are now kept in abeyance and the 2011 Patent Manual shall continue to be applicable. We at SFLC.in do hope that the Indian Patent Office will withdraw the 2015 Guidelines in totality. This will further energize the Government's Make In India initiative as more programmers and startups will be free from fear of litigation and will continue to innovate and make great software.

All Posts | Oct 17,2015

New patent guidelines may spell trouble for Indian software developers

Every city or town, big or small, is seeing a spurt of startups that do path-breaking work in the area of software products, mobile apps and embedded products. However, these firms could soon be threatened by the dark-clouds looming large over the technology horizon of India in the form of software patents.

Section 3(k) of the Patents Act, 1970 excludes mathematical methods, business methods, algorithms and computer programmes per se from patentable subject matter.This provision has been a boon for software firms and coders by ensuring that India is free from the patent battles in the software arena fought in other parts of the world.

This provision has withstood many covert and overt attempts at changing it or diluting it at the behest of the multi national patent holders. Steps were taken to change this law by an amendment in 2005 and to circumvent the exclusion by means of clauses in the draft Manual of Patent Office Practice and Procedure issued in 2008. None of these succeeded, thankfully.

The proposal for amendment did not succeed as the legislature firmly objected to the proposal to extend patentability to computer programs with "technical application to industry" in the Patent Amendments Bill, 2005 for the reason that the amendment will only benefit Multinational Corporations. The Patent Manual, on the other hand, was finalized in 2011 after extensive consultations with stakeholders and the Manual categorically states that patent applications related to mathematical methods, business methods and algorithms, even if it describes technological development are considered to be not patentable. The legislature inspired by the generic pharmaceutical industry story wanted to do the same for software.

The spectre of software patents has now re-emerged, thanks to the "Guidelines for Examination of Computer Related Inventions (CRIs)" issued by the Patent Office on August 21, 2015. The new guidelines, although ostensibly issued with the aim to foster uniformity and consistency in the examination of CRI applications have completely reversed the position in the 2011 Patent Manual and gone against the provisions in Section 3(k) of the Act by allowing for patenting of computer programmes and even mathematical methods. No wonder the likes of Business Software Alliance and USIBC welcomed this change. The 2015 Guidelines state that so long as a computer program is not claimed "in itself", but is claimed in such a manner as to establish industrial applicability while fulfilling all other patentability criteria, the patent should not be denied. Thus, the expansion of patentability of software based on "technical application to industry" that the legislature prevented in 2005 has now been allowed through the back-door.

The new guidelines, by interpreting Section 3(k) in a manner that allows for granting of patents in the area of software, could result in programmers and startups having to write code in perpetual fear of infringing on some patent or the other. Boundaries of protection claimed by Software patents are often hazy and this results in patents in the area of software being the most litigated.

It is essential to take urgent steps to ensure that these guidelines are recalled so that Indian companies and developers can continue to innovate and write code without fear of being dragged into courtrooms for patent infringement.

All Posts | Sep 15,2015

Joint letter to the PMO expressing concerns over the “Guidelines for Examination of Computer Related Inventions (CRIs)”

SFLC.in, along with several civil society organizations and citizens, penned a joint letter to the Prime Minister of India on September 15, 2015 expressing concerns over the "Guidelines for Examination of Computer Related Inventions (CRIs)" issued by the Office of the Controller General of Patents, Designs and Trademarks on August 21, 2015.

Despite being intended to further foster uniformity and consistency in the examination of patent applications relating to CRIs, the 2015 Guidelines make way for the patenting of mathematical and business methods and computer programs, which until now was prohibited under Section 3(k) of the Patents Act, 1970 for the specific purpose of preventing monopolies and fostering innovation. The present Guidelines, by allowing patents in these areas, pose a significant threat to Indian industry and innovation, and could greatly undermine the Government's "Make in India" initiative.

An amendment to Section 3(k) proposed under the Patents (Amendment) Bill, 2005 had previously attempted to broaden the scope of patentability in computer programs, but was defeated due to protests in Parliaments over its potential to create monopolies by multinationals. This demonstrates a clear legislative intent against broadening the scope of patentability under Section 3(k), as is done by the 2015 Guidelines.

It is therefore necessary to initiate urgent steps to recall the 2015 "Guidelines for Examination of Computer Related Inventions (CRIs)", and to ensure that any future guidelines on this subject are in tune with the legislative intent.

A copy of the joint letter is available here.