This is definitely a highly delayed post. In June 2013, the Indian Patent office (IPO) has issued draft guidelines for examination of computer implemented inventions (CIIs), which aim to bring uniformity and consistency to the examination of applications for CIIs across various branches of the IPO. Considering the limited level of jurisprudence available in India, the guidelines may amount to ‘lawmaking’. To this extent, the guidelines appear to make the test of patentability of the CIIs somewhat in accordance with the practices of the European Patent Office and the United Kingdom Patent Office, and in certain cases, more stringent than intended.
In his response to the Draft Manual of Patent Office Practice and Procedure (MPPP) 2008, former Supreme Court judge Justice V R Krishna Iyer stated that the draft MPPP 2008 was irrelevant as neither the controller nor the Central Government has authority or sanction of law to publish a manual of such kind. He opines that through the MPPP 2008, the Patent Office interprets certain sections of the Patents Act, 1970 which is the domain of the judiciary.
Similarly, the draft guidelines also sate that the draft guidelines do not constitute law making. The guidelines are thus, not in themselves an authority for any action by an examiner of the Patent Office or for rebutting any action of an examiner. However, by making certain interpretations of the Indian Patent Act, the draft guidelines may potentially encourage needless litigation. It should be noted that the United States Patent and Trademark Office (USPTO) has a Manual of Patent Examining Procedure (MPEP), which only highlights how the judiciary interpreted the statute instead of the USPTO themselves interpreting the statute.
The draft guidelines also attempt to define the scope of the different sections, namely section 3(k)-(n). The draft guidelines have also attempted to define certain terms commonly used in CII related patent applications. Such definitions are based on either other laws unrelated to the Patents Act or are provided based on the ordinary dictionary meaning. For interpreting the statute, the guidelines referred to other Indian Acts, primarily the Information Technology Act, 2000 and the Copyright Act, 1957, for the definition of the terms generally used in CII patent applications, such as computer system, network, data, information, function, and computer program. These definitions seem to be taken out of the context. Generally, all Acts provide definitions in a context. It is debatable whether the definition of “computer program” as defined by the Copyright Act, 1957, which seeks for protection for expression of an idea, can be applied as-is to the terms in the Patents Act 1970, which seeks for protection of the idea itself. The draft guidelines should have established a degree of nexus between such definitions and the scope and spirit of the Patents Act, 1970.
It is surprising that the draft guidelines do not consider the interpretations of the European courts and the English courts. Given that the draft guidelines refer to ‘technical effect’ and ‘technical advancement’, which are generally used in the European courts and the English courts; and the similarity of Section 3(k) with the UK Patents Act and the European Patent Convention, one would have expected the guidelines to refer to the judgments of the European courts and the English courts. Surprisingly, the guidelines do not refer to any of the judgments of the IPAB for interpreting Section 3(k) as well. All the examples cited in the draft guidelines are decisions of the Controller. Further, the underlying principle of ‘no new hardware-no patent’, as stated in the draft guidelines, is neither supported by the statute nor by any judicial precedents. Hence, the present guidelines more or less seem to be justifying act by the Patent Office for the illustrated decisions by the Controller which had no concrete basis. The coming into force of such guidelines would only allow the Controllers to continue relying on such assessment principles.
Further, the draft guidelines impose certain conditions for the patentability of computer implemented inventions, which seem to have no support in the Patents Act, 1970. For example, the guidelines state that for being patentable, the computer program must be coupled to novel and inventive hardware. The basis for such a consideration appears to be the definition of the phrase per se which means that one is referring to something on its own rather than in connection with other things. Therefore, a computer program per se would be referring to a computer program by itself (i.e., the code), as opposed to a computer program that is in connection with other things, notably, some hardware. However, the definition of “per se” should mean that a combination of a computer program with hardware elements is outside the scope of Section 3(k). The further requirement imposed by the guidelines is that the hardware which is in connection with the computer program, should itself satisfy the requirement of section 2(1)(j) of the Act, i.e., the hardware should be novel, inventive and capable of industrial application. This requirement lacks support from the Patents Act, 1970.
It is expected that the draft guidelines would be revised to certain extent based on the feedback received from stakeholders.