Functions of the Revised Guidelines
The revised guidelines are in line with the Indian Patents Act, 1970, unlike the previous regulations. The method of permitting software patents only in combination with another process has been reverted to, and the vaguely worded regulations discussed above have been removed entirely. It can be assumed that software patents will now not be granted as easily, given the strict requirements prescribed by these regulations. This limited scope of patentability of software will help preserve innovation in the software industry.
Reguation's Issued by the Government
The initial Regulation issued by the Government on August 21, 2015, deviated from Section 3(k) insofar as they allowed software patents per se . These guidelines were a cause of worry to the software industry. According to these Guidelines, software could be patented as long as it produced a ‘further technical effect’. The phrase ‘further technical effect’ was not defined, leaving it to the judgment of the patent Examiners to determine whether a software invention produced a further technical effect or not.
Upon receiving complaints by a group led by SFLC.in, iSPRIT, and Knowledge Commons, the Indian Patent Office stayed the Guidelines on December 14, 2015. Recently (February 19, 2016) the Government issued new regulations for software patents in India.
Software per se cannot be patented
The revised guidelines clarify that software ‘per se’ cannot be patented under any circumstances. For example, claims directed at ‘computer program products’ or ‘storage medium containing instructions’ cannot be patented.
Under Regulation 5(3) , an examiner while applying the criteria prescribed for determining patentability must check if the software is combined with new hardware. This regulation reiterates that software ‘per se’ can never be patented. Only when the invention lies in both the software and the hardware will the patent be permitted. This means that any invention has to relate to novel software as well as novel hardware, for it to be patentable.
In order to be patentable software must have industrial application
Under Regulation 4.3, only software which shows industrial applicability, i.e., it produces a useful or practical activity can be patented. Software producing an aesthetic or intellectual activity cannot be patented.
Detailed disclosure requirements are specified
A significant change in the revised guidelines is the prescription of detailed disclosure requirements for patent applications for software-related inventions under Regulation 4.4. These disclosure requirements will help ensure an adequate analysis of the patent application.
For example, if the software is being patented in combination with certain hardware, detailed illustrative drawings of the hardware are to be provided. This will bring out the relevance of the combination of the hardware with the software, thus preventing attempts to obtain a patent for software ‘per se’ by falsely combining it with hardware.
The substance of the claim will be considered, not the form
Claims in the patent applications are often drafted in a way which can mislead the examiner as to the real substance of the claim. Regulation 4.4.4 requires examiners to focus on the substance of the claim as a whole, without relying on the specific form or type of the claim. Internationally, there have been great diversions as to the approach to be taken towards software patents. Basic clarity as to factors like ‘further technical effect’ is absent there as well.
The previous guidelines attempted to follow the international approach to software patenting , which allows patenting of software in itself which shows a ‘further technical effect’. The ill-effects of this confused approach can be seen in the frequent smartphone patent wars, the ongoing patent litigations and the patent troll phenomenon seen internationally. Until a better solution is found, India’s current approach appears to be preferable.
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