29 July 2016

Light at the end of the tunnel for Computer-Related Inventions?

by Mukundan Chakrapani

In the May edition of IPR Amicus, we commented on the continued ambiguity in the examination of computer-related inventions (CRIs) by the Indian Patent Office [see end note 1]. Here, we review three recent Controller’s Decisions to highlight that probably, consistency is emerging in the examination of CRIs. We hope that the Indian Patent Office will continue to apply the provisions of Section 3(k) of the Indian Patents Act in a balanced, transparent, and unambiguous manner consistent with the Guidelines for Examination of CRIs issued in February, 2016.

Indian Patent Application 1582/DEL/2004 entitled ‘Enhanced Computer Telephony Integration and Interaction,’ describes a method and system for interfacing server computers with telephone switching devices and client computers to integrate telephone and personal computer features. Independent claim 1 defines a computer telephony integration system comprising a telephony server; a computer network; a telephony client; and a private branch exchange (PBX). The telephony client (e.g., on a personal computer) is in communication with the telephony server via the computer network. The private branch exchange (handling telephone services) is in communication with the telephony server. A switch database residing in the telephony server stores information about a physical connection of an extension (e.g., a telephone) serviced by the PBX. A translation module also residing on the telephony server translates PBX data that the private branch understands into client data that the telephony client understands. The information in the switch database including PBX-specific parameters is used by the translation module to perform the translation. The telephony server forwards telephone action requests from the telephony client to the PBX and relays telephone events from the PBX to the telephony client.

Claim 1 and its dependent claims were sought to be rejected by the Patent Office under Section 3(k) of the Patents Act as being directed to computer program per se. Upon hearing the Applicant, the Controller, in his order dated May 25, 2016, reversed the rejection proposal and granted the application. Specifically, the Controller agreed with the Applicant that the ‘the present subject matter clearly involves a technical advancement and also does not solely lie in the excluded subject matter as per section 3(k) of the Act [and] as per CRI guidelines’ (emphasis added).

Indian Patent Application 1592/MUMNP/2009 entitled ‘Pre-programmed Subscriber Response,’ describes a method and apparatus for providing pre-programmed context based responses to received communications. The method is executed by an application specific integrated circuit (ASIC) on an access terminal (e.g., a mobile device). The ASIC receives and identifies a communication on the access terminal. The ASIC then associates the communication with a pre-recorded response stored on the access terminal by displaying identification information for the communication on the access terminal and a list of contexts of the access terminal (in meeting, theatre, restaurant, etc.). The ASIC receives a user selection of a context from the displayed list of contexts and in response, displays a list of pre-recorded response messages on the access terminal based on the selected context. Each pre-recorded response message is recorded prior to receiving the communication and stored on the access terminal and includes an indication to inform a recipient of the selected context. Finally, the ASIC receives a user selection of a pre-recorded response message from the displayed list of pre-recorded response messages and responds, via a transceiver, to the communication using the selected pre-recorded response message. The original claims were sought to be rejected as being directed to computer program per se.

The Controller, after hearing, in his order dated May 30, 2016, agreed with the Applicant’s submission that the claimed subject matter provides a technical solution to a technical problem using ‘various physical hardware components (technical means) in a telecommunication network cannot be construed as ‘computer program per se’’. It should be noted that the claims were amended to add the technical means (the ASIC and the transceiver) in the written submissions subsequent to the oral hearing.

Indian Patent Application 1564/MUMNP/2010 entitled ‘A Telecommunications Network for Providing Access to a Plurality of Terminals and Method of Controlling Network Access,’ describes a method and system for time-based and network load-based controlled access to a telecommunication network. Independent claim 1 is directed to a telecommunication network configured for providing controlled access to a plurality of terminals during specified access time intervals and outside of peak load time intervals. Each terminal is associated with a unique identifier for accessing the telecommunications network. The telecommunication network includes a register configured to store the unique identifier of at least one terminal in combination with identification of at least one associated grant access time interval defining a time period during which the terminal can access the telecommunications network. An access request receiver of the telecommunication network is configured to receive an access request from the terminal and to determine the unique identifier associated with the terminal. The telecommunication network also includes an access module that denies access for the terminal if the access request is received outside the time period. The telecommunications network is further configured to monitor a network load of the telecommunications network and to adapt the time period depending on the monitored network load. Terminals executing machine to machine applications are denied access to the telecommunications network during peak load time intervals, which are outside the grant access time period. The original claims were sought to be rejected as being directed to computer program per se.

During oral hearing and the subsequent written submissions, the Applicant contended that the claimed subject matter solved a technical problem using technical means and provided a technical effect. The Controller agreed with the Applicant’s submission and granted the application vide his order dated May 31, 2016.

In addition to the above Controller’s orders, Indian Patent Applications 1376/DEL/2004; 5428/DELNP/2006; 5754/DELNP/2007 have also been found to be directed to patent-eligible subject matter. Specifically, the Controller, in his order dated April 29, 2016 for Patent Application 1376/DEL/2004, agreed with the Applicant’s submission that, in accordance with the February 2016 CRI Guidelines, ‘a claim for a CRI whose contribution does not solely lie in the excluded subject matter is not excluded under Sec. 3(k)’ and held that ‘subject matter of claims does not fall under excluded category as per u/s 3(k) since contribution lies in both the computer programme as well as hardware’ (emphasis added).

The above decisions suggest that the Patent Office is slowly but steadily evolving to a settled standard for the examination of CRIs. The technical problem-solution using technical means approach as well as the technical contribution approach have been accepted by the Controllers in the determination of patent-eligible subject matter. While it is speculated that further revisions to the CRI Examination Guidelines are in progress, we hope that Controller’s decisions reviewed here form the basis for inclusion of positive examples of patent-eligible claims that were conspicuously absent from the February 2016 Guidelines.

[The author is Director, IPR Practice, Lakshmikumaran & Sridharan, New Delhi]

End Note:

Ambiguous Standard for Examination of CRIs. Online: http://www.lakshmisri.com/News-and-Publications/Publications/Articles/IPR/ambiguous-standard-for-examination-of-cris. Last accessed: July 25, 2016.


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