Anshul Saurastri
Krishna & Saurastri
The Indian Patent and Trademark Office took its computer-implemented invention guidelines back to the drawing board after strong criticism. Anshul Saurastri of Krishna & Saurastri explains the recently-released changes

What do the new guidelines mean for those who seek to protect their computer-related inventions?

The new guidelines are a complete divergence from the previous guidelines, which were issued in August 2015.

Those guidelines stipulated what was patentable, unlike the original Guidelines for Examination of Computer Related Inventions, which only stated what was not patentable. The new guidelines were seen as a very fresh approach and addressed the issue of patentability with respect to computer-implemented inventions, which are typically challenging for patent examiners because of the nature of computer programs.

Computer programs alone may not be patentable in India, but when coupled with a hardware means, they may be patentable. And that’s where a patent owner would make out its argument before the examiner about technical effect.

While the initial guidelines stated what was patentable, the new guidelines were borne out of petitions from numerous IT groups, in favour of an open source network. But the new guidelines, which emerged in February this year, went back to the old adage, which stated what is not patentable. What the new guidelines did propose was a three-stage test for examining computer-implemented inventions.

The three-stage test explains that if it is a mathematical method or a business method, the examiner has to reject the claim. If the claims relate to a computer program, the examiner must look for whether it is in conjunction with hardware. For us, this means that the Indian Patent and Trademark Office (IPTO) is willing to consider the patentability of computer-implemented inventions, but only in cases where the technical contribution lies in the computer program, in conjunction with hardware.

Prior to the issuance of the guidelines, the strategy for prosecution was that patent owners would go along with the novel computer program and show that it is being used in hardware, to ensure the patent application is approved.

The new guidelines therefore place an additional burden on patent applicants. Novelty in hardware could be something litigators may have to start arguing before the IPTO.

Is it likely that IT groups will be satisfied with the new guidelines?

Well, the guidelines state that if claims fall under the excluded categories they are not patent-eligible (like the mathematical method, or the computer method). The second issue is that examinations of mathematical or business method-related inventions are typically rejected from the outset. However, with computer-implemented inventions, the examination could become more complex because of the hardware means, which many patent owners will now include within their claims.

In that case, there will be a bit of negotiation between the patent owner and the examiner. They will come to the conclusion that there is a hardware means, and therefore it is not a computer program per se and therefore it is patent-eligible.

Because of the requirements under the three-stage test, innovators and IT groups might be put off filing a patent application. That is our view right now, but with time, as the IPTO starts implementing the guidelines as law, we shall we see the real brunt of what IT groups may or may not face.

It’s important to note, however, that the IPTO should be willing to consider the patentability of computer-implemented inventions where the invention uses technical means to solve technical problems and obtain technical effects on the basis of both software and hardware improvements.

What effect will these guidelines have on business?

Since software and innovation is helping to improve hardware products, the requirements to include novel software, along with novel hardware, in a patent claim is a heavy burden on the patent applicant.

It seems that the patent requirements for computer-implemented inventions have become a lot stricter. This could disincentivise innovators, in which to secure their business model by way of creating barriers to entry through patents. However, the new guidelines could have a positive outcome, but it depends on which side you’re on.

Do you think the guidelines could be revised further?

Definitely. In terms of assisting patent applicants, it would be helpful if the IPTO provided live examples of computer-implemented inventions along with novel and inventive hardware when examining applications. Such examples might help a patent owner to form its application and ensure that its applications are accepted.

It has to be noted that the guidelines are very new right now and we need further information to really assess how effective they will be. Within a few months we will be able to come up with other ways in which the guidelines may be implemented and changed.

At the moment, the current guidelines look stricter, but I think as more examinations are carried out and more caselaw develops, we’ll be able to tell whether they are actually stricter, or perhaps they have clarified something that was always intended.

That said, the guidelines will likely be modified again. They are subject to change all the time. There’s the argument for both sides—the innovators and the copycats, like open source in software, for example. The first guidelines were issued in August last year, then six months later they were changed.

We haven’t seen a change in the guidelines in so many years, then we have two changes in such a short amount of time.

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