Interpretation of Section 3(k) of the Patents Act, 1970 (the Act) that imposes an absolute bar on patentability of business methods, mathematical methods, algorithms and computer programs per se continues to remain a contentious issue for applicants and IP professionals in India.
The Manual of Patent Office Practice and Procedure (MPPP) [see end note 1] provides that computer programs stored in a computer readable medium are computer programs per se and are not patentable subject matter. Thus, while the MPPP establishes that hardware requirement for patenting software is beyond that of being stored on a computer readable medium, it fails to provide any additional guidelines as to what, if any, are the hardware requirements for patenting a novel software.
Further, the draft Guidelines for Examination of Computer Related Inventions (CRI) [see end note 2], published by the Indian Patent Office in June 2013, provides that a computer program loaded on a general purpose known computer or related devices, would be considered as “computer programme per se.” Further, the draft guidelines also stipulate a computer program claimed in conjunction with hardware will be allowed only if the claimed hardware is new or novel. In this respect, the CRI guidelines direct the Examiners to carefully consider how the novel hardware is integrated with the computer program.
The draft CRI guidelines do not have the force of law, however, the strict requirement for a novel hardware it prescribes, has added to the apprehension that software inventions may not be patentable as per the Indian law. Although uncertainty relating to patentability of software inventions persists due to lack of jurisprudence in this regard, the following decision from the Intellectual Property Appellate Board (IPAB) highlights that the law does not mandate that, for software to be patentable, the software must execute on a novel hardware or even a specifically adapted hardware.
Accenture Global Service Gmbh v. The Asst. Controller of Patents & Designs & Others [see end note 3]
Accenture Global Service GmbH (Accenture), Applicant, filed patent application No. 01398/DELNP/2003 on 1 September 2003 for a system for developing Internet-hosted business applications. In the first examination report (FER), dated 29 January 2008, in addition to other grounds, the atent office objected to the claims under Section 3(k) of the Act. Further to the FER, the Applicant was given an opportunity to be heard by the Controller. During the hearing with the Controller, the Applicant submitted revised claims. Upon exanimation of said claims, the Controller issued an order rejecting the grant of the application.
The standard of examination of the claims used by the Controller was as follows:
- "A hardware implementation performing a novel function is not patentable if that particular hardware is known or is obvious irrespective of the function performed.
- If the novel features of the invention resides in a set of instructions (programme) designed to cause the hardware to perform the desired operations without special adoption of the hardware or modification of the hardware, then the matter claimed either alone or in combination is not patentable.”
The appellant challenged the decision of the Controller in the IPAB alleging that the above mentioned standard, applied for examining the claims, were neither specified in the Act nor the MPPP. Further, no Indian court had laid down such guidelines in any case. Agreeing with the Applicant, the IPAB observed that the standards applied by the Controller to refuse the application were nowhere prescribed in Act, MPPP or in any guidelines from the courts and held the order to be based on “ill founded premises and was far from being logical and reasonable”. The IPAB remanded the application back to the Controller for reconsidering the patentability of the claims.
Upon reconsideration, the claims, without any significant amendments, were held to be not relating to software (computer program) per se. Rather the claims were found to relate to a system having an improvement in web services and software, and were allowed.
The decision of the IPAB reinforces that the law does not mandate the requirement of a novel hardware or a special modification or adaptation of an existing hardware for patentability. A hardware or computing system performing a novel function need not be novel and non-obvious in itself or need not be a special adaptation of an existing system for the software to be patentable subject matter in India.
[The author is a Principal Associate, IPR Practice, Lakshmikumaran & Sridharan, New Delhi]
- Section 08.03.05.10 of the MPPP (http://www.ipindia.nic.in/ipr/patent/manual/HTML%20AND%20PDF/Manual%20of%20Patent%20Office%20Practice%20and%20Procedure%20-%20pdf/Manual%20of%20Patent%20Office%20Practice%20and%20Procedure.pdf)
- Section 5.4.5- 5.4.7 of the CRI Guidelines (http://ipindia.nic.in/iponew/draft_Guidelines_CRIs_28June2013.pdf)
- IPAB Order 283 of 2012 dated 28 December 2012