Computer Software-implemented Inventions
29 August 2012
With the advent of computers, processes of various fields such as travel, advertising, retail, banking, insurance and telecommunications are largely implemented by computer software to incorporate large volumes of data efficiently and accurately. Such processes are implemented in computers as computer-implemented inventions through such software. Such computer-implemented inventions that include software inventions and/or business method inventions may be legally protected in India by either patents or copyrights. Copyright does not provide comprehensive protection for software where ways of expression of the same idea may differ. Therefore, owners of such computer implemented inventions usually seek for a patent protection instead.
Section 3(k) of the Indian Patent Act precludes from patentability a mathematical or business method or a computer programme per se or algorithms. There was lack of clarity over the terms “business methods” and “software programme per se” before issuance of Manual of Patent Office Practice and Procedure on March 22, 2011. Prior to that, examiners at the Indian Patent Office used to object under Section 3(k) to computer implemented inventions where no hardware features were present in claims. In such a case, it was usual practice to amend claims to incorporate hardware features to overcome the objection. There are a significant number of cases where a patent has been granted consequent to said amendments, some of which are discussed below:
Google’s patent application claiming system and method for determining user actions was rejected under Section 3(k) in the first office action. However, the applicant incorporated the hardware features into the claims while responding to the office action. A patent was granted after a hearing in which minor amendments were carried out. The granted claims include method and system claims.
A Microsoft patent application claiming a system and method for generating avatars was also rejected in the first office action for falling under Section 3(k). The applicant filed a response to the first office action contesting the objection. However, the rejection under Section 3(k) was maintained and a hearing notice was issued. A patent has now been granted upon hearing with method and system claims.
According to the manual, “business methods” claims are at times drafted not directly as business methods but rather with some technical features included such as internet, networks, satellites, or telecommunications. This exclusion applies to all business methods and therefore, if in substance the claims relate to business methods, even with the help of technology, they are not considered to be a patentable subject matter.
Further, the manual explains that if subject matter in a patent application relates only to a computer programme, it is considered as a computer programme per se and hence is not patentable. Claims directed at ‘computer programme products’ are to be considered a computer programme per se stored in a computer-readable medium and as such are not allowable. Even if the claims, inter alia, contain other subject matter which is not a computer programme, the examiners will determine whether such subject matter is sufficiently disclosed in the specification and forms an essential part of the invention.
In view of the above mentioned explanation, the examiners at the patent office have started rejecting claims in respect of a business method inventions or software programme per se inventions even when the hardware features have been incorporated.
A pre-grant opposition was filed by Rediff against a Yahoo patent application relating to a system and method for influencing a position on a search result, culminating in rejection of the application by the Controller of Patents. Yahoo filed an appeal against the order of the Controller. The Intellectual Property Appellate Board (IPAB), hearing the appeal, refused to grant a patent, stating that the subject matter of the application related to business method even though hardware features were incorporated in the claims. The order also mentions that the technical advance that is claimed in the application over the existing art involves only an improvement in the method of doing business, which therefore attracts Section 3(k) and does not render it patentable. The order thus validates the guidelines for examining business method inventions mentioned in the Manual of Patent Office Practice and Procedure.
In view of the IPAB order and the manual, it is expected that the Indian examiners will now examine computer software applications more carefully. Consequently, claims where novelty and non-obviousness resides merely in the business process and not in the technical advancement will likely continue to be rejected by examiners. Further, patent applications for computer software implemented inventions will continue to be rejected under Section 3(k) for those inventions where novelty and inventiveness is merely in the software unless the software in combination with hardware features provides some tangible technical effect.
In today’s world, computer software is an essential part of most business processes and state-of–the-art equipment. It is speculated that with further growth of indigenous research and development in this field, the Indian government may have to allow software patents in the future to encourage world-class innovations by Indian industry.
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