CIS' submission to Indian Patent Office on Examples of Excluded Patentable subject-matter under Section 3(k) for incorporation in the yet-to-be-released Guidelines for Computer Related Inventions

This post contains CIS' submission on specific examples on exclusions from patentability under section 3(k). You may view the Guidelines here. To read the letter sent to the PMO, click here. To read CIS' analysis of the Guidelines, click here.

It is worth noting that the IPO requested for negative examples of patentability [CRIs that cannot be patented under the Act]. While it is commendable that the IPO sought inputs from stakeholders for negative examples, stakeholders have often requested the IPO to provide positive examples of patentable CRIs. The yet-to-be-released-Guidelines should also mention a sufficient number of positive examples to provide better clarity to stakeholders.

ILLUSTRATIVE EXAMPLES ON EXCLUSION FROM PATENTABILITY OF COMPUTER RELATED INVENTIONS
to
THE HON'BLE CONTROLLER  GENERAL OF PATENTS DESIGNS AND TRADEMARKS
by
THE CENTRE FOR INTERNET AND SOCIETY, INDIA

I. PRELIMINARY

1. This submission presents specific examples on exclusions from patentability, under section 3(k) of the Patents Act, 1970, for possible incorporation in the Guidelines for Examination of Computer Related Inventions.

2. This submission is based on the Guidelines for Examination of Computer Related Inventions released in September 2015("2015 Guidelines/ Guidelines"). The Guidelines are in abeyance, presently.

3. The Centre for Internet and Society ("CIS") commends the Hon'ble Controller General of Patents Designs and Trademarks ("CGPTDM"), Department of Industrial Policy and Promotion, Ministry of Commerce and Industry, Government of India for its efforts at seeking inputs from various stakeholders. CIS is thankful for the opportunity to have been a part of this discussion since 2008; and to provide this submission in furtherance of of the feedback process continuing from the stakeholders' meeting conducted by the Hon'ble CGPTDM on 19.01.2016.

II. OVERVIEW

4. The Centre for Internet and Society is a non-governmental organization engaged in research and policy work in the areas of, inter alia, intellectual property rights, access to knowledge and openness.[1] This submission is consistent with CIS' commitment to safeguarding general public interest, and the interests and rights of various stakeholders involved. Accordingly, this submission aims to further these principles.

III. SUBMISSIONS

5. Broadly, we submit that the Guidelines narrowed the legal exclusions on patentable subject matter in section 3(k). Consequently, the Guidelines were arguably in violation of section 3(k).

6. To supply clarity to the examination procedure, CIS has proposed a definition to "computer programme per se" in its previous submissions to the Indian Patent Office :

"Computer programme per se in the relevant clause means (a) any computer programme in the abstract, (b) any computer programme expressed in source code form, including source code recorded on an information storage medium, or (c) any computer programme that can be executed or executes on a general purpose computer, including computer programme object code designed for execution on a general purpose computer that is recorded on an information storage medium."[2]

Further, since the inclusion of computer programmes in a broader application should not render the application ineligible subject matter, CIS previously proposed an addition to the test:

"We propose a new part to the subject-matter test to make the clause clearer. The Manual should specify that "the computer programme portions of any claimed invention should be treated as if it were covered by prior art and patentability should thus be determined with respect to the other features of the invention". This way, we can ensure that an invention which merely uses or implements a computer programme is not granted patent on the basis of the inventiveness of the computer programme per se." [3]

7. Accordingly, CIS would like to highlight examples of specific patent applications on exclusions from patentability, under section 3(k) of the Patents Act, 1970, for considering their possible incorporation in the Guidelines. The applications are:

7.1 Application No.: 112/CHE/2008

Title: Bill payment card method and system

The Asst. Controller General correctly examined and rejected the invention on the grounds of it purely relating to a business method and processor configured software. Applicant had contended, inter alia, that the method claimed a series of steps being executed with hardware features , including a communication network, communication link and other hardware peripherals intrinsic to the execution of the claimed method.

Further, in their reply to the objections in the FER, the applicants stated:

" There is present a database to perform the functions of the card electronically. The processor is configured to receive information, transmit information and/or authorize the card and associated information thereof. The processor may be configured to produce reports, issue reports, confirmation receipt etc.

It also consists of a card which may include electronic and/or magnetic features e.g. a microprocessor, memory and an electronic chip, a magnetic strip, a USB flash drive and a wireless communication device. The card may be configured to communicate with a wired devices, such as by USB, coaxial cable..."

"...The whole process brings out technical effect in a way that this system allows for the payment of bills without the use of a bank account, credit card, or money order. Hence it is a system with technical features producing technical effect. Hence, enhancement of a business or teaching a way in which a business is carried out is essentially not the the prime motive of the instant invention. With its technical character, technical features and enhancement in business comes as by-product of the implementation of the instant invention."

The invention was rejected.

7.2 Application No.: 48/CHE/2005

Title: Structured approach to software specification

The applicant asserted in their reply to the FER[4] that the claims related to an information managing system including at least on processing unit, a system memory, a system bus, a LAN, a remote computer, a video adapter and monitor and a software architecture performing a particular task or implement particular abstract data types. As a result, they contended that the said invention did not fall under the purview of section 3(k) of the Indian Patents Act, 1970.

The application was correctly rejected by the Controller in the first instance itself.

7.3 Application No.: 2019/CHENP/2004

Title: Apparatus and method of a distributed capital system

The FER included objections regarding lack of novelty, inventiveness, lack of constructive features, lack of support for the word "means" , objections towards a business method, computer program per- se towards an algorithm (objections incl. 3(k)) per se and also towards claims relating to mere medium etc.

Further, it was stated by the Office that even the amended claims failed to overcome the said objections because, inter alia, " the subject matter of the claims related to a method of carrying out financial transactions with one or more parties in a Distributed capital system implemented by pure software I algorithms per-se. The said method is a mere business method/algorithm which is implemented in a computer network through software modules."[5]

The invention was rejected.

7.4. Application No.: 4986/DELNP/2006

Title: A method of tracking a radio frequency signal by means of electronic equipment.

The objections in the FER were that, the subject matter claimed fell within the scope section 3(k) as amended by the Patents (Amendment) Act 2005, for being algorithm based method. Subject matter as described and claimed in computer program product claims as well fell within the scope of section 3(k), for being relating to computer program per se. The examination correctly disregarded the implementation of the invention on electronic equipment.

The invention was rejected.

7.5 Application No.: 1405/MUMNP/2008

Title: Method for determining an output value from a sensor in automation engineering

Order issued u/s 15 clearly pointed out that the contribution of the applicant was a mathematical method to determine the output variable from the input variable. And since mathematical methods were intellectual in nature, the invention lacked technical advancement.

The invention was rejected.

7.6. Application No.: 914/CHE/2007

Title: A system, method to generate transliteration and method for generating decision tree to obtain transliteration

One of the claims read:

"A system to generate transliteration of source language script into target language script using decision tree based technique with automated supervised learning, said system comprising of

i. a device having memory;

ii. an input device for entering text;

iii. transliteration engine to maintain patterns and predetermined rules used in transliteration of source language script into target language script;

iv. a display device for displaying entered text and transliterated textl and

v. an interface to enable typing in any language and optionally to integrate the transliteration system into existing web-pages."

The application was correctly rejected by the Examiner for on grounds of falling under section 3(k), inter alia.

8. CIS welcomes the initiative of the Hon'ble CGPTDM to provide said illustrative examples. CIS believes that it is essential that the Guidelines avoid violation of section 3(k), and are formed complying with the Indian Patents Act, 1970 and relevant judicial decisions; and keeping in mind the legislative intent.

9. CIS would be willing discuss these submissions with the Hon'ble CGPTDM; and supplement them with further submissions if necessary, and offer any other assistance towards the efforts at developing a Guidelines for Examination of Computer Related Inventions.

On behalf of the Centre for Internet and Society
Anubha Sinha
Programme Officer