Indian Patent Office Releases Guidelines for Examination of Computer Related Inventions

By an order dated August 21, 2015, the Controller General of Patents, Designs and Trademarks released the latest guidelines for examination of patent applications dealing with computer related inventions. The guidelines are available here. This post is merely an update on this development. I hope to undertake an analysis of the Guidelines soon.

Paragraph 3 of the Guidelines contains definitions of algorithm, computer, computer network, computer programme, computer system, data, firmware, function, hardware, "per se", software and a few more similar and relevant terms. Para 4.5 of the Guidelines deals with determination of excluded subject-matter in patent applications, with specific sub-heads separately dealing with determination of various categories of subject-matter excluded under Section 3(k) of the Patents Act, 1970. Extracted below are some of the relevant portions:

4.5 Determination of excluded subject matter relating to CRIs 
Since patents are granted to inventions, whether products or processes, in all fields of technology, it is important to ascertain from the nature of the claimed CRI whether it is of a technical nature involving technical advancement as compared to the existing knowledge or having economic significance and is not subject to exclusion under Section 3 of the Patents Act. The sub-section 3(k) excludes mathematical methods or business methods or computer programme per se or algorithms from patentability. Computer programmes are often claimed in the form of algorithms as method claims or system claims with some „means‟ indicating the functions of flow charts or process steps. 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. What is important is to judge the substance of claims taking whole of the claim together. If the claims in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium fall under the said excluded categories, they would not be patentable. However, if in substance, the claims, taken as whole, do not fall in any of the excluded category, the patent should not be denied. 

4.5.4 Claims directed at Computer Programme per se: 
The computer programme per se is excluded from patentability under section 3 (k) apart from mathematical or business method and algorithm. Claims which are directed towards computer programs per se are excluded from patentability, like (i) Claims directed at computer programmes/ set of instructions/ Routines and/or Sub-routines written in a specific language (ii) Claims directed at “computer programme products” / “Storage Medium having instructions” / “Database” / “Computer Memory with instruction” i.e. computer programmes per se stored in a computer readable medium The legislative intent to attach suffix per se to computer programme is evident by the following view expressed by the Joint Parliamentary Committee while introducing Patents (Amendments) Act, 2002:

“In the new proposed clause (k) the words ''per se" have been inserted. This change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon. The intention here is not to reject them for grant of patent if they are inventions. However, the computer programmes as such are not intended to be granted patent. This amendment has been proposed to clarify the purpose.” 

The JPC report holds that the computer programmes as such are not intended to be granted patent. It uses the phrase “ … certain other things, ancillary thereto or developed thereon…..”. The term “ancillary” indicates something essential to give effect to the main subject. In respect of CRIs, the term “ancillary thereto” would mean the “things” which are essential to give effect to the computer programme. The clause “developed thereon” in the JPC report may be understood as any improvement or technical advancement achieved by such development. Therefore, if a computer programme is not claimed by “in itself” rather, it has been claimed in such manner so as to establish industrial applicability of the invention and fulfills all other criterion of patentability, the patent should not be denied. In such a scenario, the claims in question shall have to be considered taking in to account whole of the claims. 

IPAB’s Yahoo Order: Analysis- I

This post continues from the last post on the IPAB order on Yahoo's patent application.
Brief Facts

Title of the Invention: System and Method for influencing a position on a search result listing generated by a computer network search engine

Date of Filing: May 12, 2004 (with a priority date of May 28, 1999 from a US application)

Date of Issuance of FER: December 30, 2004

I haven’t been able to lay my hands on the complete specification, but from what I could glean from the order, the invention apparently relates to “competitive bidding”. The Patent Office raised 17 objections in the FER, of which the primary objections were:

A. Ineligibility of subject-matter under Section 3(k) of the Patents Act

B. Insufficient distinctiveness of Claims 62 and 63

To meet the objections, the applicant submitted new set of claims, which among other things, included “technical subject-matter” to overcome the 3(k) objection. However, objections were raised again citing raising Section 3(k) and lack of novelty. To this the applicant responded by deleting 25 “apparatus claims”.

It appears that on June 9, 2006, the Patent Office found the application in order for grant. Unfortunately for the applicant, a pre-grant opposition was filed on October 22, 2007 which was decided against the applicant on March 30, 2009. The pre-grant rejection was based on ineligibility of subject-matter and lack of novelty (anticipation).

The applicant appealed to the IPAB against the pre-grant rejection.

Novelty

Two prior art documents were cited against the applicant on the issue of novelty. The first was an article titled “Search Engine Report” by Danny Sullivan (referred to as D9 in the order) and the second was a copy of Frequently Asked Questions (FAQs) from the applicant’s own website (referred to as D10).

The Sullivan article basically describes a method of getting better placements in the results lists of search engines, which involves payment by the entity seeking better placements. The higher the payment/bid, the better is the placement in the search results. The placement of searches is done by entities/sites which function as referral sites for an entity which seeks more eyeballs.

For instance, GoTo.com could act as a referral site for Reliance and ensure that search results relating to Reliance are placed better, subject to the payment of a certain fee by Reliance for every successful click.

In the pre-grant proceedings, the above-described Sullivan article was deemed as anticipating the application of the applicant. However, this finding was arrived at by the Controller after having discarded certain features claimed in the patent application. The features were discarded on grounds that they did not constitute “technical subject matter” and were hence ineligible.

The IPAB took the view that when dealing with the issue of novelty, the Controller ought to have simply compared the features described in the Sullivan article with the features claimed in the patent application without looking into the issue of eligibility of claimed subject-matter. The IPAB therefore took the view that the Controller’s analysis with respect to the Sullivan article was flawed.

My Thoughts

The approach to novelty that the IPAB seems to advocate raises an important question, which was dealt with in the much-discussed Symbian v. Controller of Patents decision, which I had discussed elsewhere quite some time ago. The question that must be asked is as follows:

In ascertaining novelty, must the claimed invention be compared as it is with prior art? Or must only eligible/patentable subject matter be compared with prior art?

The Controller excluded non-technical subject matter before evaluating the invention for novelty against the prior art. On the other hand, the IPAB took the view that the entire invention must be compared with prior art without filtering the claim for ineligible subject-matter.

The Aerotel test (in the UK) requires identification of actual contribution made, and examination of its eligibility as patentable subject-matter as the primary step in scrutinizing a patent. To me, this makes sense because criteria such as novelty, non-obviousness and industrial applicability are to be touched upon only after eligibility is satisfied in the first place.

Eligibility is the primary threshold which must be surmounted before requisite standards of novelty and non-obviousness are met with. The analysis of the contribution of an invention to the state of art is strictly restricted only to those aspects of the invention which fall within the scope of permissible/patentable/eligible subject-matter.

Therefore, was it incorrect on the Controller’s part to exclude non-technical/ineligible subject-matter from the claimed invention, before evaluating it for novelty? I don’t think so...

Consequently, I do not agree with the IPAB’s approach to novelty, assuming that the result was ultimately the right one.

More to come in the next post. 

Stale News: IPAB Dismisses Yahoo’s Appeal from Pre-Grant Patent Rejection

In a 32-page order dated December 8, 2011, the IPAB dismissed the appeal filed by Yahoo Inc against a pre-grant opposition order in which Yahoo's application for a patent on “System and Method for Influencing a Position on a Search Result Listing Generated by a Computer Network Search Engine” was rejected.

The primary (and it appears the sole ground) for dismissal of the appeal was Section 3(k) of the Patents Act which bars grant of patents to computer programmes per se. We will undertake a detailed analysis of the decision shortly and welcome opinions from readers and practitioners on the decision.

I thank Ms.Sunita Sreedharan for drawing my attention to the order!