Software patentability in India- a case of one step backward, one step forward
The Indian Patent Office predicament over software patents continues. The patent office has issued another version of modified guidelines for the patentability of Computer Related Inventions (CRIs) on June 30th 2017. This is the third time the guidelines related to patentability of CRIs have been modified. The first version of the guidelines was issued on 21 August 2015 (2015 Guidelines) which were later replaced by the guidelines issued on 19 February 2016 (2016 Guidelines).
Both the earlier guidelines raised several questions and intense debate due to lack of clarity on patentability criterion for CRI patents in particular requirement for hardware component to be novel in addition to the software/program.
As per 2015 guidelines, the patentability criterion provided:
- a novel hardware, or
- a novel hardware with a novel software/program or
- a novel software/program with a known hardware which goes beyond normal interaction with such hardware and affects change in functionality and/or performance of the existing hardware.
The above guidelines led to easing the patentability bar with respect to novelty of the hardware component as it allowed the patent on CRIs having a novel software/program with a known hardware which goes beyond normal interaction with such hardware and affects change in functionality and/or performance of the existing hardware. The guidelines were however objected by local software industry and start-ups on the ground would mean a flood of software patents.
The 2016 guidelines required that the focus of the examiner should be on the underlying substance of the invention and not the particular form in which it is claimed. The claims should be properly construed and the actual contribution of the claim must be identified, and if the contribution lies only in a mathematical method, business method or algorithm, the claims are to be denied. It also listed out Tests/Indicators for the patent examiners to determine Patentability of CRIs as mentioned below:
(1) Properly construe the claim and identify the actual contribution;
(2) If the contribution lies only in mathematical method, business method or algorithm, deny the claim;
(3) If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.
The above guidelines were again cause of concern, particularly in cases where the hardware component was not novel to the extent as desired by the Patent Office.
The Patent office has now issued fresh guidelines to address concerns of stakeholders. One of the essential features of 2017 guidelines is deletion of the recommended test/Indicators to determine patentability of CRIs as detailed above. The guidelines were currently strictly applied by the examiner and in case the hardware and software did not pass the novelty test they were refused at the threshold. The deletion of these “test parameters” gives discretion to the examiners to focus on the underlying substance of the invention, not the particular form in which it is claimed. This is amplified by the clarification provided in the guidelines that when the issue relates to hardware/software relation, the expression of the functionality as a “method” is to be judged on its substance.
Finally, it may be noted that the Patents Act clearly excludes computer programmes per se. Thus guidelines have to be read with the provisions in the Patent Act. We believe the examiners would have discretion while determining the patentability of CRIs however may not allow blanket exclusion of hardware novelty requirement in a patent application by merely camouflaging the substance of the claim by its wording.