Patentability of Computer Related Inventions (CRIs) in India

Patentability of
Computer Related Inventions
Presented by,
Arun Narasani, Founder, ipMetrix Consulting Group

Speaker Today
Arun Narasani
Founder, ipMetrix Consulting Group (www.ipmetrix.com)
 More than 10 years experience as an IP professional
 More than 5 years experience as a software engineer
 Vast experience in writing and prosecuting applications
 Registered patent agent
 Certified Valuation Analyst
 Certified TRIZ Practitioner
 Published journal articles in technology and law
 Co-authored a book on Indian Patent Law
 B.Tech, IIT Madras
 PGPEM, IIM Bangalore

Agenda
2 Review of MPPP
1 Evolution of patent law and definitions
3 Case law
4 Allowable and non-allowable subject matter
5 Observations and summary

Patents Act, 1970 and Amendments
Patents Act, 1970
First Act post independence
Came into force in 1972
Three amendments were passed, all of them primarily
aimed at bringing India’s patent regime into compliance
with the WTO TRIPs Agreement
Patents (Amendment) Act, 1999
Provided for filing of applications (date stamping) for
product patents in the areas of drugs, pharmaceuticals, and
agro-chemicals with retrospective effect from Jan 1, 1995

Patents Act, 1970 and Amendments
Introduced the new patent rules, 2003
Amended the definition of “invention”
Introduced compulsory license provisions relating to export
of patent pharmaceutical products in exceptional
circumstances
Amended the definition of “inventive step”

Patents Act, 1970
 Introduced the definition in Section 2(1)(j):
"invention" means any new and useful
(i) art, process, method or manner of manufacture
(ii) machine, apparatus or other article
(iii) substance produced by manufacture

Patents (Amendment) Act, 2002
 Amended definition in Section 2(1)(j):
"invention" means a new product or process involving an
inventive step and capable of industrial application;
 Introduced definition in Section 2(1)(ja):
“inventive step” means a feature that makes the invention
not obvious to a person skilled in the art;
 Introduced exclusion in Section 3(k):
A mathematical or business method or a computer
programme per se or algorithms

Patents (Amendment) Act, 2005
 Amended the definition in Section 2(1)(ja):
“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 not obvious to a person skilled in
the art

Agenda
2 Review of MPPP and examination guidelines for CRIs
3 Case law
5 Observations and summary

Examination procedure
 MPPP 08.03.05.10(e):
Patent applications, with computer programme as a
subject matter, are first examined with respect to
‘Mathematical Methods’, ‘Business Methods’, and
‘Algorithms’ exceptions.

Examination procedure
 MPPP 08.03.05.10(f):
If the claimed subject matter in a patent application is only
a computer programme, it is considered as a computer
programme per se and hence not patentable.
Claims directed at ‘computer programme products‘ are
computer programmes per se stored in a computer
readable medium and as such are not allowable.

CRI Examination Guidelines
 Section 3.15 – Technical Effect:
“It is defined for the purpose of these guidelines as solution to a technical
problem, which the invention taken as a whole, tends to overcome. A few
general examples of technical effect are as follows:
• Higher speed
• Reduced hard-disk access time
• More economical use of memory
• More efficient data base search strategy
• More effective data compression techniques
• Improved user interface
• Better control of robotic arm
• Improved reception/transmission of a radio signal”

 Section 3.16 – Technical Advancement:
“It is defined for the purpose of these guidelines as
contribution to the state of art in any field of technology. It
is important to divide between software, which has a
technical outcome, and that which doesn’t, while assessing
technical advance of the invention. Technical advancement
comes with technical effect, but all technical effects may or
may not result in technical advancement.”

 Section 5.4.6 – Determination of excluded subject matter:
“A computer programme which may work on any general purpose
known computer does not meet the requirements of the law. For
considering the patentability of computer programme in combination
with hardware features, the hardware portion has to be something
more than general-purpose machine. In cases where the novelty
resides in the device, machine or apparatus and if such devices are
claimed in combination with the novel or known computer
programmes to make their functionality definitive, the claims to these
devices may be considered patentable, if the invention has passed the
triple test of novelty, inventive step and industrial applicability.”

Yahoo Inc Vs. Assistant Controller of Patents and Designs
 Patent application relates to methods for retrieving search
results based on bid amounts placed by advertisers
 Rediff.com files pre-grant opposition on the application
 Patent office rejects the patent application because invention
does not pass novelty and patentability test
 Yahoo appeals and the appeal is heard by IPAB

 Independent claim:
A method of operating a computer network search apparatus for generating a result list
(710) … the search apparatus comprising a computer system (22, 24) operatively
connected to the computer network and the method comprising:
storing a plurality of items (344) in a database (38, 40), …;
receiving a keyword entered by a user though an input device (12);
searching the stored items (344) and identifying items representing a match
with the key word entered by the user;
ordering the identified items ….;
receiving a request from the user ….;
charging to an account …; and
providing information providers (302) with authenticated login access ….;
wherein the computer system (22, 24) sends an indication of the status of the
information provider’s account to the information provider (302) in response to the
occurrence of a predetermined condition.

 After review, the Controller concludes that
“the invention is only a business strategy and hence is not
patentable.”
 Controller further explains that:
When the patentee explains that there is an inventive step
which is a technical advance compared to the
existing knowledge (state-of the-art) or that it has economic
significance that would not give him the right to
a patent as such. ‘’The inventive step” must be a feature which
is not an excluded subject itself.

ENRI et. al. Vs. Controller of Patents and Designs, and others
 Patent application relates to methods for calculating chaos
theoretical exponent value (CTEV) at a high speed and on a real
time basis, and to calculate a CTEV from a time series signal
which includes noises, which was previously not possible
 Invention has potential applications in voice processing
 Applicant does not agree with the objections provided in the
examination report
 Applicant appeals

A system for analyzing speech voice signal comprising:
a reading means (xi) for reading a speech voice signal …;
a cutting means (xi) for cutting out said read speech voice
signal …., wherein said calculating means x(i) for calculating a chaos
theoretical exponent value comprises:
a first calculation means for calculating a chaos theoretical
exponent value ….; and
a second calculation means for calculating the chaos
theoretical exponent value of said speech voice signal with respect to
a predetermined time ….

 After review, controller concludes that:
the invention which is the technical advance was itself
nothing more than “a mathematical method for solving
mathematical claims which are further based on various
algorithms.” So the identifiable contribution was itself the
excluded subject matter according to the impugned order.
So the Controller held that the Indian Patent law does not
allow patent for a mathematical method just because it
provides a technical advance. His reasoning that merely
because a mathematical method is a technical advance it
cannot cross the 3(k) bar is right.

Enercon Vs. Aloys Wobben
 Patent application relates to power control of wind turbines
 Patent is granted to the applicant
 Enercon files for revocation of patent on many grounds, on of
which being applicability of section 3(k)
 After back and forth, the matter is heard by IPAB. One among
many considerations in the hearing is the applicability of
section 3(k)

“A method for controlling a wind turbine characterised in
that at least one operational setting is varied within
predefined limits, the variations are performed at
predetermined time intervals, and the time intervals are
varied in response to predefinable ambient and/or
operating conditions.”

 After review of applicability of section 3(k), Controller rejects
the basis for appeal saying that
An algorithm is clearly a “set of rules”. The claims of the
impugned patent relate to a method for controlling a wind
turbine by performing specific process steps. Neither the
granted claims contain a “set of rules” nor do they seek
any protection for a “set of rules”. … In this respect the first
examination report submitted during the hearing may
kindly be referred to and decide the matter that it is not an
algorithm.

Non-allowable subject matter
 Computer Programs:
“A program for analyzing source code to detect
vulnerabilities, said program embodying instructions to
perform ..”
 Media containing computer programs:
“A computer program product tangibly embodied in a
computer readable medium, ..”

 Mathematical formulae and algorithms:
“A computerized method for performing wavelet
transformation on image data, said method comprising
obtaining data..
creating a vector..
applying a transformation vector....”

 Business Methods:
“A method for generating an automated invoice in a
computerized network..”
 Automated real world processes:
“A method for tracking a due date of a task, said method
comprising.. ”

Allowable subject matter
 A novel machine/apparatus (product):
“An apparatus for delivering video stream to a connected
device, said apparatus operable by a plurality of
controllers over a Wi-Fi network..”
 A method involving purpose specific hardware elements
(process):
“A method for streaming video content to a connected
device, based on input from a controller, said method
comprising .. ”

Agenda
2 Review of MPPP
3 Case law
5 Observations from practice and summary

Observations
 Patent office has not been favorable to software architecture
improvements
“A method for enabling services using a service oriented
architecture in a network of devices …”
 Patent office has not been favorable to methods relying on
data structure improvements resulting in better performance
“A method for retrieving search results from a database
engine, said method comprising …”

Observations
 Patent office has been more lenient regarding inventions
relating to software in embedded format: mobile devices,
appliances, etc.
“A method for transliteration in a mobile
communication device ..”

Summary
 Software based inventions that can run on traditional
computing environments like a PC are very unlikely to pass
through section 3(k)
 Software based inventions where software is “embedded” are
more likely to pass through 3(k), even though such hardware
may be available in the market
 A claim cannot be directed to non-statutory subject matter like
business methods and mathematical methods even though
technical advancement is evident

Summary
 A method enabled by a software can be claimed provided it
does not follow a “set of rules” that are mathematical, and
business process oriented

Patentability of Computer Related Inventions (CRIs) in India

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