The intervention of Internet and Digital devices into an individual’s daily life has resulted in a surge of inventions in the Digital Sphere. With the advent of technology and digitalisation, issues pertaining to intellectual property rights over Computer-related devices and inventions have emerged and are being vehemently discussed.
Unlike Trademarks and Copyrights, patent protection is only provided for products or a process and not over the work of any author or a mark. Thus, inventors of computer-related inventions seek the help of the Patent Authority to protect their inventions to avoid any third party from stealing their novel ideas and using or selling it as their own.
What is a Computer-related Invention?
As per the CRI Guidelines released by the Office of the Controller General of Patents, Designs and Trade marks in 2017 “Computer Related Inventions (CRIs) comprises inventions which involve the use of computers, computer networks or other programmable apparatus and include such inventions having one or more features of which are realized wholly or partially by means of a computer programme or programmes”[1]. So, inventions based on computer-related hardware or software are termed CRIs.
To understand Patentability in Computer-related Inventions (CRIs), it is important to take note of the 3 main essential features that need to be fulfilled for any invention to be eligible for Patent Protection under the Patent’s Act of 1970 (hereinafter referred to as the Act). This is clearly outlined in Sections 2(1)(j) and 2(1)(ja) of the Act. These are:
- Novelty: The invention should be a new product or process, should be original and not published in India or elsewhere.
- Industrial Application: The invention should possess utility, so that it can be made or used in the industry.
- Inventive Step: For a person who has been involved in a similar profession or who is knowledgeable in the same area of work, the invention should not be something that is obvious or of prior knowledge.
Furthermore, it is essential to ascertain whether the invention qualifies as a Patentable Subject Matter. This can be determined by referring to Section 3 of the Patent Act, which outlines what does not constitute an invention under this act. This includes inventions which are frivolous, which are against public morality, the mere discovery of a scientific principle or an abstract theory, the method of agriculture or horticulture, etc. Under this, Section 3(k) specifically provides that ‘a mathematical or business method or a computer programme per se or algorithms’[2] is not an invention. This particular sub-clause of Section 3 has raised many doubts and debates in recent years.
Computer Related Inventions (CRI) Guidelines
The confusion was a result of the addition of the words ‘or a computer programme per se’ through the Patents (Amendment) Act, 2002, as the phrase contributed to a lot of ambiguity and vagueness to the literal interpretation of this section. Since the term ‘per se’ hasn’t been defined anywhere in the act, it makes it difficult to decide which kind of computer programmes could be patented and which are exempted from this rule or if computer programmes in its entirety cannot be patented.
To provide clarity in this regard, draft CRI guidelines were released by the Patent Office in 2013, which provided parameters according to which the Controllers should examine the CRIs. It also provided definitions of the terms ‘technical effect’ and ‘technical contribution’ bringing clarity to the definition of Inventive Step under Section 2(1)(ja)[3]. The clarification in these guidelines was that, in general, computer programmes are not patentable, but when combined with hardware, which is novel, it has the probability of getting patent protection after a thorough check done by the examiners. However, the term ‘per se’ was still not clearly explained.
The next set of guidelines were released in 2015 and were replaced by the 2016 guidelines, which were heavily criticised by the IP fraternity. The 2016 guidelines provided a 3-step Test to determine the patentability of a CRI:
- Interpret the claim correctly and determine the genuine contribution that the invention is bringing with it;
- 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 claim is to be rejected if the contribution only lies in terms of the computer programme. The invention can proceed to further stages of patentability if the contribution lies in both the computer program as well as hardware.[4]
Thus, in a way, the 2016 guidelines were much more restrictive, making it difficult for computer-related inventions to pass the threshold of patentability set by the guidelines. The latest CRI guidelines were the ones released in 2017, which removed this requirement of a novel hardware being pari passu with a Computer Programme to declare it Patentable. The Guidelines read:
“Since patents are granted to inventions, whether products or processes, in all fields of technology, it is important to ascertain from the nature of the claimed Computer-related invention whether it is of a technical nature involving technical advancement as compared to the existing knowledge or having economic significance or both, and is not subject to exclusion under Section 3 of the Patents Act.”[5]
Therefore, the requirement now is that the invention that is being claimed is of a technical nature, meaning that it either advances technology beyond what has already been done or has commercial relevance.
Case Laws
Throughout the evolution of laws and guidelines pertaining to computer-related inventions, various precedents were set by the courts that contributed to providing clarification to this aspect of patent protection.
Accenture Global Service GMBH v The Assistant Controller of Patents & Designs (2012)[6]
A Patent application was filed by the Appellant who wanted to get patent protection over the process or method used to create a data mapping document. It was argued that the present claims provide a “technical solution to a technical problem of the need for a data document design system and design tools that address one of the most important technical challenges faced by database systems is data migration.” The objection raised stated that the technical effect was indiscernible. The Intellectual Property Appellate Board (IPAB) held that: “the invention as claimed is not software per se but, a system is claimed which is having the improvement in web services and software. The invention since not falling in the category of section 3(k), viz software per se, objection is waived and patent is granted”
According to the board, the Act, the Rules, or the Manual of Patent Practise and Procedure did not stipulate the need for “novel hardware.”
The requirement of “novel hardware” was not released in the CRI guidelines during that time.
Ferid Allani v Union of India and Ors (2014)[7]
A patent application for a “method and device for accessing information sources and services on the web” was filed by Petitioner Ferid Allani in the National Phase. Nevertheless, while the application was being examined, Section 3(k) of the Patents Act was applied. Apart from the objections/rejections under Sections 2(1)(j) and 2(1)(ja) regarding the invention’s lack of novelty and inventive step, Section 3(k) of the First Examination Report (FER) raised an objection due to the invention’s status as a computer program. The Controller of Patents denied the application because he was not satisfied with the applicant’s response. The petitioner preferred to file an appeal before IPAB.[8]
The Delhi High Court here emphasized that the restriction applies specifically to ‘computer programmes per se’, not to all computer-related inventions. Additionally, the inclusion of the term “per se” in Section 3(k) of the Act was intended to safeguard genuine inventions for patent protection. Referring to Clause 4 of the Joint Committee Report on the Patents (Second Amendment) Bill, 1999, which advocated for the addition of “per se,” the court noted that the intention was to ensure that computer programs and related developments wouldn’t be automatically rejected for patent consideration if they contribute technically. In other words, they must offer a technical contribution or effect. Thus, the Patent Office was directed to review the petitioner’s application again and eventually the patent was granted by IPAB to Ferid Allani after nearly two decades, since it was first filed.
Microsoft Technology Licensing, LLC v. The Assistant Controller of Patents and Designs (2023)[9]
In the case at hand, the appellant had submitted a patent application concerning an invention titled “Methods and Systems for Authenticating a User’s Identity within Sections of a Network Location.” The core concept involved employing two distinct cookies for dual-tier authentication. Registration was denied by the Controller following an evaluation and a hearing, primarily on the grounds that the described innovation was deemed non-patentable subject matter as per Section 3(k) of the Patents Act, 1970.
The court in this case held that under Section 3(k) of the Act, the assessment of whether Computer Related Inventions (CRIs) should be granted or not depends upon their technical effects and contributions and not merely the implementation of algorithms and instructions. The court recognized the appellant’s invention as a method for authenticating users accessing network sub-locations, noting its technical contribution in enhancing security by preventing unauthorized access. Consequently, the court instructed a re-examination of the appellant’s application based on tests of novelty, inventive step & prior art.[10]
Conclusion
Therefore, the key determinant for patent eligibility in the realm of computer-related inventions lies in whether the innovation meets the three crucial criteria of Patentability: Novelty, Inventive-Step, and Non-Obviousness. Any computer-related invention that satisfies these requirements can be granted a patent, as long as it does not fall within the prohibitions outlined in Section 3 of the Act. Specifically, inventions categorized as computer programmes can be eligible for patent protection if they can demonstrate a technical nature and contribute to technological advancement or possess economic significance, as affirmed by the Patent Office.
[1] Office of the Controller General of Patents, Designs and Trade marks, 2017, Guidelines for Examination of Computer Related Inventions (CRIs)
[2] Patents Act, 1970, S. 3(k)
[3]A quick history of CRI Guidelines in India, software freedom law center, India, Software Freedom Law Center, India , Defender of Your Digital Freedom, (2023, May 17)
[4] A quick history of CRI Guidelines in India, software freedom law center, India, Software Freedom Law Center, India , Defender of Your Digital Freedom, (2023, May 17)
[5] Office of the Controller General of Patents, Designs and Trade marks, 2017, Guidelines for Examination of Computer Related Inventions (CRIs)
[6] MANU/IC/0125/2012
[7] MANU/DE/4323/2019
[8] Ferid Allani v. Union of India, https://indiankanoon.org/doc/90686424/
[9] MANU/DE/2241/2023
[10] Ip, S, (2023, June 13), Microsoft Technology Licensing, LLC vs. the assistant controller ofpatents and designs, SC IP