Recently, on September 15, the Delhi High Court set aside an order from the Indian Patent Office rejecting the patent application on the basis of the old CRI Guidelines, 2016. This decision of the court in Raytheon Company v. Controller General of Patents and Designs, thus opens the pandora box around the mandate within Section 3(k) and its interpretation under the revised 2017 CRI Guidelines, writes SpicyIP intern Yogesh Byadwal in this post. Yogesh is a 3rd year B.A. LL.B. (Hons.) student at National Law School of India University, Bengaluru. He is interested in IP Law, Constitutional Law and Criminal Law. His previous post can be accessed here.
Raytheon Company v. Controller General of Patents and Designs: The Question of CRI and 3(k)
Yogesh Byadwal
In Raytheon Company v. Controller General of Patents and Designs, Delhi HC made important observations regarding Sec. 3(k) of The Patents Act, 1970. The court was deciding an appeal preferred by the appellant against refusal of ‘grant of patent’ by the Patent office. The Appellant requested patent for their software titled ‘Scheduling in a High-Performance Computing System’. They argued that the Controller wrongly relied on Computer Related Invention Guidelines (CRI) Guidelines of 2016 instead of the updated CRI Guidelines of 2017 in arriving at their decision. Further, appellants argued, relying on the 2017 guidelines, that their subject patent application provided ‘technical advancement’ and ‘technical contribution’ by reducing time requirements typically associated with scheduling a job for execution at a High Performing Computing (HPC) system. On the other hand, the Respondents argued that the subject patent application consists primarily of software and not a novel hardware and therefore, it is excluded from the grant of patent u/s. 3(k). In this post, I will be analysing the reasoning employed in this case by the court and why I feel the judgement proceeds on an erroneous basis. I will critique the judgement in light of Sec. 3(k) of the Patents Act to expose the straining effect thereof on the express provision of the law.
Analysis of the Reasoning
The court, agreeing with the contention of the appellant, observes that the patent office was in error by following the inapplicable 2016 CRI Guidelines. Relying on Ferid Allani and Microsoft Tech. Licensing, LLC, court holds that the novel hardware standard in the 2016 CRI Guidelines has been replaced by the 2017 CRI Guidelines, and, therefore, the requirement of novel hardware no longer has any basis in law. According to the latter, the patent office has to examine if there is a technical contribution or as to what is the technical effect generated by the invention as claimed. The Court observed- “computer program patent are patentable so long as it involves a technical advancement and provides a technical solution to a technical problem and has an improved technical effect on the underlying software.” In other words, there is no absolute bar on purely software-based patent claims. The court, as a result, remanded the matter back for redetermination by the Controller relying upon the 2017 guidelines without novel hardware requirement.
In order to fully understand the reasoning, I will try to trace the evolving interpretation of Sec. 3(k), especially regarding computer-related invention(CRI).
The Debate Around 3(k)
Sec. 3(k) of The Patents Act, 1970 reads as:
3.What are not inventions- The following are not inventions within the meaning of this Act,-
*******
(k) mathematical or business method or a computer programme per se;
Sec. 3(k), simply put, lays down that the above are excluded from being Patented. The section itself is pretty unclear and vague. Therefore, there have been various amendments by the legislature and guidelines from the Patent office to fill the gaps in Sec. 3(k). These developments have been extensively discussed here. However, the ping-ponging interpretation of the section has been hotly contested over the years. As regards software programme, the debate has revolved around whether purely software-programs can be patented provided they fulfill certain conditions or does it need to accompanied by a novel hardware requirement. For our discussion, we will focus on 3 specific guidelines-
- Draft Guidelines for Examination of Computer Related Inventions, 2013(here)
- Guidelines for Examination of Computer Related Inventions, 2016.
- Revised Guidelines for Examination of Computer Related Inventions, 2017.
The 2013 guidelines had laid down the requirement of ‘novel hardware’ in deciding whether a CRI was patentable. The CRI would be excluded u/s. 3(k) if it was accompanied by a General Purpose Machine. Another set of CRI Guidelines in 2016 reiterated the requirement of a novel hardware in conjunction with a computer program (software) when a method claims qua a new computer program in combination with the hardware are being claimed. However, in light of heavy criticism, guidelines were again released in 2017 which diluted the exclusion under Sec. 3(k). It removed the ‘novel hardware’ requirement and stated that computer program as such are not patentable except inventions that involve a technical contribution or effect, beyond the program itself, which may be patentable. The 2019 Manual (here) further helps in defining terms such as “Technical Problem”, “Technical Contribution or effect”, and ”Technical advantage” used in the 2017 guidelines.
Delhi HC in Microsoft Tech. Licensing, LLC v. Controller General of Patents and Designs recently sought to settle the position regarding the patentability of CRI. It observed that the insertion of words ‘per se’ means that “computer programs as such” are non-patentable. However, if a computer program is used in conjunction with a hardware or results in a technical effect/solves a technical problem, it may be eligible for patent protection. According to the court, the focus in the 2017 CRI guidelines appears to be on substance over forms and claims. The holding of the judgement as regards Sec. 3(k) is:
“If a computer-based invention provides a technical effect or contribution, it may still be patentable. The technical effect or contribution can be demonstrated by showing that the invention solves a technical problem, enhances a technical process, or has some other technical benefit. The mere fact that an invention involves a mathematical or computer-based method does not automatically exclude it from being patentable. The invention can still satisfy the patentability requirements, including the requirement for a technical effect or contribution, to be eligible for patent protection. In other words, method claims in computer program patents may be patentable if it involves a technical advancement and provides a technical solution to a technical problem and has an improved technical effect on the underlying software….An invention should not be deemed a computer program per se merely because it involves algorithms and computer-executable instructions.”
Another judgement of the Delhi HC in Ferid Allen v. UOI, on CRI, held:
“If the invention demonstrates a ‘technical effect’ or a ‘technical contribution’ it is patentable even though it may be based on a computer program…. The bar on patenting is in respect of ‘computer programs per se….’ and not all inventions based on computer programs…. “The words ‘per se’ were incorporated so as to ensure that genuine inventions which are developed, based on computer programs are not refused patents.”
Ferid Allen, on CRI Guidelines, observed- “they explain the principles that have to be applied by the examiner, and are expected to assist the examiner in dealing with applications, especially, those which involve complex subject matter.” Therefore, according to the court, “patent application deserves to be considered in the context of settled judicial precedents which have now laid down the interpretation of Section 3(k), the Guidelines and other material including the legislative material.”
However, these observations raise certain important questions- What probative value can be assigned to Guidelines? Can these guidelines be allowed to trump the letter of law? What should the courts do in case of conflict between the two?
The Guidelines and 3(K): What to Believe?
The legal nature and effect of CRI guidelines were discussed by Sukarm in another post. He rightly observes -“they are not any form of legislation, delegated or otherwise… Since these guidelines have been explicitly clarified to not constitute rule making, it is evident that they are not binding on the court, or even the patent offices. At best, they are tools for interpretation.” On conflict with express provisions of the Act, he writes- “paragraph 1.5 explicitly mentions that ‘these guidelines do not constitute rule making’ and that in case of any conflict, ‘the provisions of the Act and Rules will prevail over these guidelines.’
Are there any conflicts between Sec. 3(k) of the Patent Act and CRI Guidelines?
Here, Sukarm argues that the language of 3(k) never intended computer programmes themselves to be patentable which is clearly in conflict with the CRI 2017 guidelines. I agree with Sukarm in his arguments raised as to the patent conflict between the language of the law and CRI guidelines which, at best, are aids of interpretation.
It is clear that a chasm exists between what the law allows and the extent to which the guidelines stretch the interpretation thereof. In this post, Swaraj showcases how the JPC report in 2001 clarified that computer programs as such could never be granted patents by themselves. In fact, when the Patent offices started to give ‘software patents’ in 2008, there were various debates around the validity of such an interpretation with the 88th Parliamentary standing committee(here) noting that this was wholly contradictory to the language of the Act. From 2011 to 2017, there have been numerous flip-flops as to whether the exclusion of computer software u/s. 3(k) is a broad or narrow. The constant proposal of and retraction from novel hardware requirements in these guidelines provides enough evidence that the language of 3(k) needs to be further clarified by the legislature. The guidelines are not only contradictory with the express provisions and intentions of the law but also with each other. In this situation, it is best to be cautious about relying on the same for deciding a patent claim.
The judgement in Microsoft Tech. Licensing, LLC, therefore, in my opinion wrongly prefers the 2017 CRI guidelines to the 2016 guidelines. The latter by mandating a ‘novel hardware requirement’ for patent claims with respect to computer programs is more in tune with the language and intent behind Sec. 3(k). The present case, Raytheon Company, makes a similar mistake by relying on the Microsoft case. It affirms the position that ‘computer programs’ as such are patentable provided they fulfill the conditions of overcoming a ‘Technical Problem’ by going beyond it through a ‘technical contribution or advancement’.
There is no mention of such conditions either in the language of the law or statement of objects and reasons. The evolving trajectory of Sec. 3(k) through a legislative prism nowhere supports this interpretation which further strains the words of the law. The interpretation placed dilutes the exclusion of the law which goes against the objective of the lawmakers. 2016 guidelines, on the other hand, broaden the exclusion, which, on perusal of the legislative history seems more in line with the language and intent.
Conclusion
Going by the recent call for comments on all guidelines and manuals, the Patent Office may be currently framing another set of amendments or even guidelines and manuals qua Sec. 3(k). As laid down herein, it is important to strike a note of caution. The concerned authorities must ensure that any clarification which is supposed to aid in the interpretation of a particular provision must conform with the express provisions of the law and remain closer to the intent of the law. Additionally, the court, before preferring a particular interpretation must ensure to strike a balance between protecting the rights of inventors and promoting the public interest and social welfare. A cautious approach in this regard helps maintain internal consistency within the system.
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- Source: https://spicyip.com/2023/10/raytheon-company-v-controller-general-of-patents-and-designs-the-question-of-cri-and-3k.html
