We live in a digital world today where we are surrounded by appliances, gadgets and web applications. With the advent of new technologies such as artificial intelligence, machine learning, block chain and IoT, most technologies and inventions are computer based. With increasing dependence on computer and network based technology, it is imperative to provide adequate protection to such technologies and the underlying inventions in order to foster and incentivize innovation and creativity.

While software programs can be protected under copyright laws, it is difficult to obtain patent protection for computer based programs due to ‘subject matter’ and ‘patent eligibility’ related restrictions for patenting of computer related inventions (“CRI(s)“) worldwide. CRIs are inventions which involve the use of computers, computer networks or other programmable apparatus and also include inventions having one or more features which are realized wholly or partially by means of a computer program or programs.[1]

Article 52 of the European Patent Convention does not regard programs for computers as patent worthy inventions. The inventions are required to demonstrate a “technical character” in order to meet the patent eligibility threshold in Europe. In the USA, subject matter eligibility is identified under 35 U.S.C. 101. The US Supreme Court in the landmark judgment of Alice v. CLS Bank[2], identified a two-step approach to determine if a software related invention was patent eligible. In the first step, the examiner is required to check if the computer-related patent application relates to an “abstract idea”.  If it does, the examiner has to check in the second step if the patent application has some elements that “transform” the claimed invention into a patent-eligible invention.

In India, Section 3(k) of the Patents Act, 1970 (“Patents Act“) precludes the patentability of mathematical or business methods, or a computer program per se, or algorithms.  The Indian Patent Office (“IPO“) published the guidelines for examination of computer related inventions in 2017 (“CRI Guidelines“), which set out the criteria for examining a CRI. While the test for determination of novelty, inventive step and industrial applicability remain the same for CRIs as in other inventions, CRIs often find it difficult to cross the hurdle of Section 3(k) of the Patents Act in India.

It is imperative to note that the law only precludes computer programs per se and not all types of computer programs. Although the term ‘per se’ is not defined under the Patents Act, the CRI Guidelines rely upon the general dictionary meaning of the term “per se” to suggest that the said term means “by itself” or “in itself” or “as such” or “intrinsically”. The term ‘per se’ was added by the Joint Parliamentary Committee while introducing the Patents (Amendments) Act, 2002 as the intention of the Parliament was never to categorically bar all computer programs from patenting.

Claims in the patent applications disclosing CRIs are often directed towards a method or a system. The CRI Guidelines clarify that the focus should be on the underlying substance of the invention, and not the particular form in which it is claimed. This is so because excluded subject matter should not be granted patent protection merely because of some clever drafting camouflaging the underlying invention.

The claims concerning CRIs are often drafted as a means for performing some function i.e.  in ‘means + function’ format. It is required that the “means” refer to a physical constructional feature/structural element which is supported by the specification. Such physical constructional feature/structural element need not be novel. However, if such physical constructional feature/structural element is altogether absent in the specification, the concerned patent application may be rejected as it is nothing but a computer program per se. While the CRI Guidelines emphasize on the presence of such physical constructional features/structural elements in the claims and the specification, it has been observed that the patent examiners often look for a further ”technical effect” going beyond the “normal” interactions between the program and the hardware.

In a recent case involving patentability of CRIs viz. Ferid Allani v. Union of India and Ors.[3], (“Ferid Allani Decision“), the Delhi High Court (“DHC”) held that “the bar on patenting is in respect of `computer programs per se….’ and not all inventions based on computer programs”. The DHC went on to hold that in today’s digital world, when most  inventions (including inventions in the field of artificial intelligence and block chain technologies) are based on computer programs, it would be retrograde to argue that all such inventions would not be patentable.

The DHC also observed that an invention based on computer program may be patentable if a technical effect or a technical contribution can be demonstrated. While the term “technical effect” has not been defined under the Patents Act or the CRI Guidelines, said term was defined in the draft CRI guidelines of 2013 and the DHC stated that the meaning of the term “technical effect” can be construed from the judicial precedents and patent office practices internationally and in India.

In view of the Ferid Allani Decision as well as several rulings of the IPO while examining patentability of CRIs, any patent application disclosing a CRI, in order to be considered patentable under Section 3(k) of the Patents Act, must necessarily demonstrate:

(a) technical effect/ technical character of the invention i.e. the invention solves a technical problem in the prior art which does not relate to non-technical subject matter like administration/management functions etc.

(b) presence of physical constructional features/structural elements i.e. hardware components in the claimed subject matter as well as the specification; and

(c) a further technical effect going beyond the “normal” or “routine” physical interaction between the general purpose hardware and program.

The Ferid Allani Decision clarifies the law in relation to patentability of computer programs and is therefore certainly a welcome step. It will also ensure, going forward, that patent applications disclosing CRIs are not out rightly objected / rejected under Section 3(k) of the Patents Act. However, the need of the hour is for the IPO to come up with comprehensive guidelines and perhaps a step by step approach to be followed by the patent examiners while evaluating patentability of CRIs in view of the criteria mentioned above.

Authors:

Nandan Pendsey, Partner
Akriti Kapoor Kalra, Associate

Footnotes:

[1] Indian Patent Office Guidelines for Examination of Computer Related Inventions, 2017.
[2] 134 S. Ct. 2347 (2014).
[3] W.P.(C) 7/2014 & CM APPL. 40736/2019.