Feedback on draft guidelines for Computer Related Inventions

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The IPO recently received feedback on its draft guidelines for Computer Related Inventions (here). Madhulika blogged about these guidelines (here). 

Feedback revolve mainly around the following issues: 

• Most of the comments view the guideline’s interpretation of S. 3(k) as unduly ‘restrictive’, especially with regard to the meaning of ‘computer programs per se’. Comments also highlight the lack of examples of computer programs that are patentable and point to the fact that that the guideline only give examples of computer programs that are not patentable. The main area of concern is that the guideline allows a novel device with a computer program that defines it functionality patentable but considers a novel computer program on a general purpose or known computer/device as not patentable. Many believe that this restrictive interpretation will negatively impact innovation: “Thus it is strange to encourage old technology over new technology - the very opposite of the purpose of the patent system”. 

Though these concerns may seem valid, the guideline cannot prescribe the interpretation that these comments desire. It is important to bear in mind that these guidelines are not law and have no authority to change the law. They only act as a guide to the correct interpretation of the law. The legislative history of S. 3(k) as well as the Yahoo decision strongly suggests the requirement of a novel device in addition to a computer program. The fact that the words “other than its technical application to industry or a combination with hardware” were removed from S. 3(k) implies that the ‘invention’ is to be located not in the computer program alone because otherwise all novel computer programs would be considered patentable. This would render the words ‘per se’ redundant. If any change has to be made, it will have to be made by the Parliament alone. 

• Hardware or software and means plus function test: Comments suggested the need for the guidelines to specifically explain the level of technical contribution of the hardware. Requests were also made for illustrations to explain to what extent the characteristics of hardware should be specifically disclosed. 

Curiously, a comment suggested that “invention must be viewed and examined for its novelty and inventive step irrespective of the same residing in the software or the hardware.” And to strengthen this argument, Amazon’s one click patent was used to say “the protection given to the Method, the User Interface, and the Software System leading to a convenient and efficient way of online shopping (in the time contemporary to when filed) is a good example of considering protection for the Computer related Inventions (CRI).” 

This interpretation is troubling because Amazon’s one click patent was nothing but a business method! It was

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a business strategy to ‘lock in’ customers by making online shopping quicker. The software merely executed this business strategy and therefore prima facie should not be given patent protection. Otherwise, any computer program executing a business method, an algorithm or even a mathematical calculation can qualify as patentable. Moreover, the IPAB’s Yahoo decision also adopts this approach and the guidelines cannot deviate from this precedent.

• Business methods: Though most comments favoured the exclusion of such subject matter from patentability they requested for an explanation that would help determine whether the claimed invention is a business method or not. Requests were also made for the inclusion of details such as patent number, application number, citations etc. for illustrations used in the guidelines. 

• Some concerns were raised about how the guidelines may raise issues with India’s international trade obligations, including Article 27 of the TRIPs. It was argued that allowing for a restrictive approach to computer programs would amount to ‘discrimination in the field of technology’. This concern seems misplaced. First, these guidelines are not law so they can’t be the basis of a TRIPs challenge. Second, even if they were considered, the US and EU have also had problems with dealing with this subject matter and labeling them as ‘inventions’. Therefore there is clearly no international consensus or uniformity in standards in this regard.