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All Posts | Dec 28,2018

From the archives- Apple Inc. v. Samsung Electronics Co Patent Dispute

ROTTEN APPLE SUES JUICY PEAR

Rotten Apple Sues Juicy Pear

 

Rotten Apple Sues Juicy Pear Part 2

 

THE INNOVATORS

The Innovators

 

THE PATENT LAWYERS

The Patent Lawyers

 

PATENTS AND THE DEATH OF INNOVATION

Patents and the death of innovation Part 1Patents and the death of innovation Part 2Patents and the death of innovation Part 3

This Comic Strip on “Apple v. Samsung Patent Dispute” was conceptualized & designed by Yashaswini Prasad and Kabir Darshan Singh Choudhary. [2013] 

This work is licensed under a Creative Commons Attribution-ShareAlike 4.0 International LicenseCreative Commons License

All Posts | Jun 25,2018

Welcome AI! – The Indian Government’s Ambitious Policy Proposal

Healthcare, Education, Smart Cities and Transportation Identified as Key Sectors

On June 4th, the NITI Aayog published a discussion paper[fn]Can be downloaded from - http://niti.gov.in/writereaddata/files/document_publication/NationalStrategy-for-AI-Discussion-Paper.pdf [/fn] titled “National Strategy for Artificial Intelligence”. While recognizing the potential of AI for the economic and social growth of India, the paper identifies five sectors which are set to play a pivotal role in the adoption of AI in the country and are likely to benefit from Government intervention – Healthcare, Agriculture, Education, Smart Cities and Infrastructure and Smart Mobility and Transportation. These sectors were chosen as private sector participation alone was deemed insufficient to drive AI adoption in these categories (sectors such as banking and manufacturing seem to have been purposely ignored despite them driving AI usage in India). The paper envisions India as a research hub for AI related technologies; it recognizes the need for skilling its workforce for better adoption; the need for creating awareness and supporting start-ups; and the importance of maintaining ethics, privacy and security with the use of AI.

India – AI Garage of the World

The discussion paper pits India’s ambitions in becoming an AI garage for the world. It imagines India to be a playground for global institutions to develop scalable solutions which can be easily adopted in other developing nations. For establishing India as a research hub, the paper calls for setting-up of centres of research - Centre of Research Excellence in AI (these institutions will focus on core research and building a knowledge base around AI) and International Centre for Transformational AI (these institutions will be focused on creation and adoption of AI based applications). The paper also calls for a change in the Intellectual Property (“IP”) framework in India to strengthen laws for bringing AI applications under the purview of patents and protecting the financial interests of innovators, ignoring finer details like how growth of innovation will be ensured if AI applications[fn]As AI applications are computer based technologies, it is important to clarify that for the purpose of this discussion, AI applications are construed as either – a set of algorithms/ computer programme or software.[/fn] are patented and concentrated in a few hands in the industry. It has been a long standing view of experts that making computer programmes patentable will hinder innovation in technology. Currently, algorithms and computer programmes (per se)[fn]Though, as per section 3(k) of The Patents Act, 1970, computer programmes are per se not patentable, the Controller of Patents has in the past offered Patents to companies such as – Facebook, Google and Apple for their computer related inventions.[/fn] are completely excluded and are not patentable under Indian law - as per section 3(k) of The Patents Act, 1970[fn]Section 3(k) of The Patents Act, 1970, excludes mathematical or business methods, computer programmes per se and algorithms from being considered as inventions for the purposes of the Act.[/fn]. If algorithms/ computer programmes are brought under patent law, large corporations will win in the race of filing claims, thereby creating a patent thicket, impenetrable by small players. This will lead to hampering of growth, as sprucing innovation often requires open platforms and active sharing, specially in the field of technology. Even in mature patent jurisdictions like the United States, there is a growing concern around patenting of computer programmes (software). According to renowned patent reformers Bessen and Meurer – granting patents to computer software hinders innovation. In their book - ‘Patent Failure – How Judges, Bureaucrats and Lawyers Put Innovators at Risk’ they distinguish softwares from other inventions on the basis that – claims under software patents are often abstract and ambiguous which leads to a problem in determining their applicability. They say, “Abstract claims in software patents might be especially difficult to translate into well defined property boundaries.” For Bessen and Meurer, abstract claims for software patents end up rewarding patentees for inventions they do not invent and lead to reduced incentive for future inventors. They also argue that due to increased litigation in issues of software patents, the costs of litigation for such inventions far exceeds their profits.

Thus, a change in the IP framework to bring AI applications under the purview of patents is trickier than it seems. Firstly, this will require a major overhaul of the law itself, as patent law currently doesn’t recognize algorithms and computer programmes as inventions. Secondly and more importantly, the rationale behind patenting of AI applications will need to be debated, to ensure that innovation isn’t hampered.

NITI Aayog envisions ambitious uses like – Internet of Medical Things and Autonomous Trucking

The paper comprehensively enumerates various challenges faced by the identified industry sectors and offers recommendations on how AI can help overcome these challenges, but it fails to illustrate the implementation mechanism of these ambitious goals. Moreover, the solutions seem to be slightly disconnected from the ground realities of India. For example, the paper advocates the use of robotics and Internet of Medical Things for solving problems in healthcare in India and helping the Government meet its social objectives. Considering the low affordability and penetration of health services in India, it does not visit details of how such a task will be implemented or scaled up. Similarly, in Agriculture and Education, recommendations such as – soil and crop health monitoring; and adaptive learning and intelligent tutoring systems seem to be lofty goals not contextualized to the Indian situation. Implementing AI tools for soil and health monitoring will require substantial investment on both sides, (government level, as well as at farms) including educating farmers on the use of this new technology. Similarly, with ICT infrastructure a challenge in public schools, along with low teacher awareness, putting in place mechanisms such as intelligent tutoring systems and adaptive learning seems far fetched.

The paper quotes low driver cost per kilometer questioning the economic practicality of autonomous vehicles in India, but recommends investment in such technologies for the purposes of export and to build ancillary expertise. While brushing away the use of autonomous vehicles on Indian roads, the paper routes for autonomous trucking, AI in railways and use of AI in Indian cities for solving traffic woes. The chapter on smart cities and infrastructure warrants red-flagging as it recommends controversial applications of AI such as – crowd management by monitoring and predicting behaviour and implementation of safety systems by keeping a check on people’s movements by using sophisticated surveillance systems and social media intelligence platforms. Crowd monitoring and predictive behaviour need to be addressed with issues of privacy and data protection before implementation and the suggestion of a social media intelligence platform is reminiscent of the I&B Ministry’s proposed Social Media Communication Hub.

A National Data Marketplace for Increased Access to Meaningful Data

One of the most innovative suggestions of the discussion paper is the establishment of a data marketplace for solving the problem of access to data sets by new entrants in the AI foray. The paper envisages the formation of a decentralized data marketplace based on distributed ledger technology, it puts the responsibility on the Government to introduce regulations for the setting-up of such a data marketplace by private players. The paper predicts that the introduction and use of a National AI Marketplace will lead to collaboration, access and accelerated adoption of AI among enterprises and public authorities. Though, establishment of a national data marketplace will benefit smaller players and increase access to meaningful data, it also raises questions of privacy and protection of sensitive data. Before such a marketplace is installed, India requires a robust data protection law, which not only sets comprehensive guidelines for the collection of data but also prescribes reasonable penalties for their violation.

Explainable AI and Self Regulation

On the Ethics, Privacy and Security front – the paper advocates for elimination of data bias by identifying and removing them on a case-by-case basis. Though, the paper discusses explainable AI/ algorithms, it is vague in its applicability. The paper calls for the enactment of a robust data protection law (it also makes a reference to the Justice Srikrishna Committee – which has been tasked with drafting a new data protection law for India) and formulation of sector specific regulations for diversity in applicability. Adherence to International Standards for safety and privacy and encouragement of self-regulation are some of the other methods suggested by the paper to ensure privacy. The paper calls for establishing negligence tests and safe harbours as opposed to strict liability for estimating damages for abuse of process. Though these recommendations are forward looking, there are some issues worth highlighting – the paper acknowledges the concept of explainable AI but doesn’t tackle government use of AI and transparency. It’s essential that the government makes AI use transparent and accessible in the public domain to eliminate instances of foul-play. Rules for self regulation and safe harbour might not be effective in situations of gross negligence and corporate oversight or when dealing with new technologies. The paper is also silent on use of AI technologies in military practices – considering the Indian armed forces are working on incorporating AI in their operations[fn]http://www.thehindu.com/news/national/india-gears-up-for-ai-driven-wars/article23944083.ece[/fn], it is an important moot point.

Conclusion

This discussion paper is a step in the right direction and NITI Aayog’s move should be sufficiently acknowledged, but as policy design and implementation goes in India, the magic lies in execution. The paper has recommended some ambitious uses of AI in Indian life without going into the financial viability of such projects, given that public participation has not been invited yet, this paper is a pre-cursor to a larger policy debate which shall ensue in the coming months. With the draft law on data protection on its way and India standing on the brink of federal elections in the coming year, it will be interesting to see where and how NITI Aayog and the central government take the debate on AI from here.

All Posts | Nov 30,2017

Visit to Asian Law School

On Thursday, 23 November 2017, Biju K. Nair (Executive Director) and Sukarn Singh Maini (Counsel) visited Asian Law School to teach law students about practical aspects of being a lawyer and our work on protecting your digital freedoms.

We discussed how to deal with clients, issues of software patents, licensing, freedom of speech, privacy, net neutrality, Aadhaar and the Information Technology Act, 2000 through a practical interactive session on how to deal with real life instances of these issues. We ended the session with a guide on how to protect one's privacy while browsing the internet through live demonstration of tools that can be used to analyze who is gathering your data, how to block web trackers and how to anonymize oneself online. The overall session lasted approximately two hours.

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 | Aug 04,2016

SFLC.in at FSMK Camp 2016

Free Software Movement of Karantaka (FSMK) organizes annual week long technical camps for students, with a special emphasis on Free & Open Source Software (FOSS), its significance, benefits, and contribution towards an internet ecosystem that is free (as in Freedom) and accessible to all. SFLC.in was a proud co-organizer of the FSMK Camp, 2016 held from 18th to 24th July, 2016 and had the opportunity to conduct workshops with the young students on the broad themes of privacy, creative commons, and software patents. These workshops gave us the platform to interact and initiate conversations with students on topics  that are intrinsic for developing rights, practices, and laws  that foster growth of knowledge and freedom for the use of the abundant resources being offered via the internet.

Particpants at the Camp

The team representing SFLC.in at this Camp conducted activities on three specific topics: Creative Commons, Software Patents, and Terms of Service & Privacy Policies. These topics were each chosen to represent ideas and principles that are fiercely advocated by SFLC.in, namely freedom to innovate, open access to knowledge, and privacy.

  • Creative Commons: This workshop was an effort to introduce the concept of licensing of creative works under creative common licenses that integrate more freedom in their terms of use as opposed to the traditional copyright regime. As a part of this presentation, the various features of a creative common license, such as attribution, non derivative, non commercial, share alike, public domain, were discussed in detail. These features were then practically implemented through a group activity by the students where they created their own original work, in the form of a story by using items licensed under creative commons and licensed it under a Creative common license. This activity was a short introduction to Copyleft, where we tried to explain the various features of the creative common licenses, their ability to be customized as per the author's needs, and the sharing of knowledge through a common pool of resources.
Nehmat Kaur speaking about Creative Commons Licenses
  • Software Patents: This activity was of particular importance for the students participating at the FSMK Camp as these camps are designed for students from a computer science and technical background. The one and a half hour workshop on this topic was designed by way of an activity that asked the students to design various parts of an e-commerce platform to demonstrate how software developers would have difficulties with even simple coding solutions if software patents are permitted. Further, we elaborated on the laws and the current legal system around granting patents to softwares, and the debate around this issue in India. This exercise, was an eye opener for the future software developers about the patent land mine in the way of innovation, that already exists around the world, and could be a possibility in India as well.
  • Terms of Service & Privacy Policy: This session aimed to dissect a few key provisions in a social media platform's terms of service and privacy policy and through that, have a conversation about digital privacy, its representation in the physical world, the digital footprint being created every moment, and importance of privacy for enabling freedom of expression. We touched upon Aadhaar and the importance of a solid foundation for the scheme that guarantees the protection and security of our personal information, and the imperative need of a data protection law for the country.

Creative Commons ActivityStudents learning FOSS technologies

SFLC.in on the Camp GearAll Participants

Camp Website

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 28,2016

Comments on DIPP Discussion Paper on Standard Essential Patents and Their Availability on FRAND Terms

Following a sudden surge in IPR litigation surrounding Standard Essential Patents (SEPs) in the last year, (around eight suits were filed by Swedish multi-national Ericsson alone, another three by Vringo Infrastructure. Read more here) the Department of Industrial Policy and Promotion (DIPP) recently released a "Discussion Paper on Standard Essential Patents and Their Availability on FRAND Terms". The paper was released on 1st March 2016, with an objective of inviting views and suggestions from the public at large to develop a suitable policy framework to define the obligations of Standard Essential Patent holders and their licensees. Stakeholders' comments are invited until 29th April 2016.

Here's our take on the issue

Standards, particularly in technology-intensive industries, are de facto a supplemental form of international trade regulation, made in substantial measure by patent-holding private corporate actors. These parties devote considerable effort to embedding their patent monopolies in specific standards-recommended technologies. By doing so, they multiply the value of their patent rights by requiring licenses from all implementers of the standard. Even though Government of India now decisively prefers royalty-free and open standard goals for all nationally-developed standards, in many crucial industries, including telecommunications, regional or global standards organizations, such as IEEE and ITU, will impose "standard essential patent" monopolies on the Indian economy.

Recommendations concerning SEPs

  • Because section 3(k) of the Indian Patent Act makes computer programmes "per se" unpatentable, as recognized by the Patent Office in its recent guidelines for examination of computer-related inventions, the Office should formally re-emphasize that computer program source code (software per se) implementing standards-recommended technology can never, as a matter of Indian law, infringe SEP monopolies.

  • Required FRAND (Fair, Reasonable and Non-Discriminatory) license terms for SEPs identified in Indian national or nationally-adopted standards should be set by the Bureau of Indian Standards. Those license terms should establish both royalty rate and required royalty-free (RF) exceptions. Such exceptions should include required RF licensing for educational, experimental and research implementations of SEPs.

  • Required FRAND licensing terms set by BIS should establish royalties based on the Smallest Saleable Patent Practicing Component (SSPPC) measure, rather than as a percentage of the sale price of standards-compliant devices or products. BIS could co-ordinate with sectoral SSOs like Telecom Standards Development Society India;

  • BIS should directly regulate the use of Non-Disclosure Agreements to modify or negate, whether directly or indirectly, the required FRAND licensing terms imposed by SEP-holders on standards-compliant licensees;

  • BIS should be the dispute resolution body of first recourse in case of any infringement dispute related to SEPs and BIS should decide on the FRAND terms for licensing of SEPs;

  • The Government of India has notified the Policy on Open Standards for e-Governance in November 2010 and the policy mandates that the Government shall adopt Single and Royalty-Free (RF) Open Standard progressively for a "specific purpose with in a domain", to meet the laid down objectives of the Policy. Standard Setting Organisations in India should strive to ensure that standards that are adopted are Open and Royalty-free. The Indian SSOs should try to emulate World Wide Web Consortium (W3C), an SSO which works on standards for the web, which mandates its members to license patents that are essential for implementing a standard on a royalty-free basis;

  • The Government could also look at compulsory licensing as an option to ensure that holders of Standard Essential Patents do not abuse their dominant position and to protect public interest.

Full text of our comments submitted to DIPP. [PDF]

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.