Long post ahead!
Last week, we ran a post informing our readers about the Draft Guidelines for Examination of Computer-Related Inventions (CRI), 2025 (hereinafter draft guidelines), which was made open for public consultations. Our readers would know that the last CRI guidelines were issued in 2017. On a prima facie reading of the draft guidelines, one can notice some interesting changes, as the new draft includes a discussion relating to recent jurisprudence and examples of patentable claims. This post seeks to dive deeper into the draft guidelines and analyse their inherent contradictions and shortfalls. This post seeks to point out some of the specific issues associated with the draft guidelines. Firstly, the post will deal with the very short time provided for soliciting comments on the draft guidelines. Secondly, the post will focus on the inherent contradictions and the confusion that have been introduced by the case laws that have been incorporated into the draft guidelines. Thirdly, the post will discuss how the patent office has added to the confusion by incorporating some additional steps under inventive step analysis. Finally, the post discusses how the Patent Office has missed discussing some important case laws with regard to business methods. This analysis is not to be treated as exhaustive; it merely points out some important and glaring issues with the jurisprudential morass surrounding Section 3(k) and how the draft guidelines, by incorporating them, do not clarify it but add to the confusion. Interested readers should note: the deadline for submissions of feedback/comments to this draft is just two days away – 15th April! With that said, let’s jump right in.
Too little time?
The draft guidelines were opened for public consultation on 25/03/2025, and the deadline for giving comments is 15/04/2025. Thus, the time given to stakeholders and the public to submit their comments is 21 calendar days (and just 14 working days!). The new draft guidelines have been released after a span of around eight years and at a time when computer related inventions are changing the face of technology. The draft guidelines seek to provide ‘examination guidance’ with regard to all aspects of CRIs (Novelty, inventive step, Section 10 requirements). The draft guidelines come on the heels of a series of judgements issued by the Madras High Court and the Delhi High Court (most of the cases have been discussed ad nauseam in this blog). The draft guidelines also take into account these latest legal developments. Twenty-one days is too little of a time to provide adequate comments or prepare a response to the draft guidelines, whose importance cannot be lighted as the draft guidelines seek to “provide guidelines for the examination of patent applications in the field of CRIs by the Indian Patent Office so as to further foster consistency in the examination of such applications.” Thus, the Patent Office should consider extending the due date so that it can receive more robust and useful feedback and suggestions on such an important set of guidelines.
Computer Confusion Confounded:
In a post discussing Section 3(k), Prof Basheer, long back, noted how software and patents tend to confuse and confound. On reading the draft guidelines, one is left with a similar feeling. This confusion and confounding is partly attributable to the “recent jurisprudence” surrounding CRIs, which has been incorporated into the draft guidelines. Likewise, this is also attributable to how the draft guidelines is drafted (especially concerning the section dealing with inventive step).
To give a bit of a background, there has been a flurry of cases ( for discussion of these cases, see here) post-Ferid Allani (discussed in detail by Swaraj) in which the Courts have attempted to apply, at times mystical sounding “technicality” test (for lack of a better word) to decide the question of whether a patent application overcomes the 3(k) bar. The draft guidelines have attempted to incorporate these judicial decisions, aiming to “foster consistency”. Yet the same cases have made the issue into a jurisprudential morass. Yogesh, in a post, discussed all the recent Section 3(k) decisions and showed how there is a lot of inconsistency in the manner in which the Courts were deciding questions surrounding Section 3(k). Previously, I had also pointed out how the Court has not defined what constitutes “technical”, which builds in a lot of inconsistency and uncertainty. With that context put in, let’s sample the recent jurisprudence incorporated into the draft guidelines.
Checking out the “Recent Jurisprudence” Section:
Around seven Delhi High Court cases and one Madras High Court judgement are mentioned in the draft guidelines. Take Farid Allani, it states that around the world, patent applications are tested on the “fulcrum of technical effect and technical contribution”. Yet, as Adrash Ramanujan notes, “technical effect” and “technical contribution” tests have their origins in the EU, and they are not synonymous. Technical contribution analysis is done in reference to the prior art, which was later abandoned in the IBM case, which came up with the test of “further technical effect” (which finds mention in Ericsson vs Lava discussed here), which then was the subject to further course correction with the substantive analysis shifting to inventive step and the question of patentability under Article 52 becoming a mere formality. Yet, by mentioning both tests in the same breath and without clarifying their relevance or distinction in the Indian context, one is left confused.
Likewise, take another case which finds mention in the draft guidelines, Microsoft Technology Licensing Llc vs The Assistant Controller Of Patents And Designs. Here, too, the Court did not stop at technical effect/contribution or further technical effect but stated that “the inventive contribution of a patent should not only improve the functionality of the system but also achieve an innovative technical advantage that is clearly defined and distinct from ordinary operations expected of such systems” One now wonders, how to measure or attempt to answer the question of whether a patent application discloses an invention which has “inventive contribution” or “innovative technical advantage”. Likewise, shouldn’t the question of “inventive contribution” be associated with inventive step why is such a requirement seeping into Section 3(k) analysis? Now, it has to be clarified that in the UK, unlike the EU, the substantive analysis is conducted at the patentability level, as pointed out by Adrash Ramanujan. Yet, in India, it is the lack of clarity and the confusion added on by the use of terms interchangeably.
Finally, the draft guidelines also cite Blackberry Limited vs Assistant Controller Of Patents And Designs, which I had argued following Ericsson vs Lava, had extended the per-se treatment to all excluded categories by judicial fiat. In OpenTV vs Controller, it held the exact opposite, stating that an absolute bar applies in the context of mathematical, business methods and algorithms and even beckoned the state to rectify this. Thus, in conclusion, when the jurisprudence in question is confusing at best, one wonders how much incorporation of the recent jurisprudence can help “foster consistency in the examination” of CRI applications.
Technical advance and Technical effect/ contribution/further technical effect/… same same or different?
In a previous post, I analysed Kemin Industries vs Controller of Patents (see here) and noted how inventive step is a two-step process. This is in line with statutory language as the statute requires an invention to have “technical advance as compared to the existing knowledge or having economic significance or both”, and then the invention should be non-obvious to the person skilled in the art. The Courts in Rhodia Operations v. Assistant Controller of Patents and also by Delhi High Court in AstraZeneca Ab & Anr v. Intas Pharmaceuticals Limited have also recognised this. If one were to see inventive step as a test of non-obviousness but more than that, one runs into a problem as to how to distinguish the “technicality” test that happens in Section 3(k) and the technical advance requirement in Section 2(1)(ja).
The statute itself lends some clue that the technical advance must be measured in comparison to the existing knowledge, which means there should be a reference to prior art to determine this “technical advance”. One can also notice hints of this in the draft guidelines, which states:
“While determining inventive step, it is important to look at the invention as a whole. It must be ensured that inventive step must be a feature which is not an excluded subject itself. Otherwise, the applicant by citing economic significance or technical advance in relation to any of the excluded subjects can insist upon grant of patent thereto. Therefore, this technical advance comparison should be done with the subject matter of invention and it should be found it is not related to any of the excluded subjects.”
This raises a lot of interesting questions: so does this mean if the differences in the prior art and the invention in question are features attributed to excluded categories, and if the “technical advance” is due to the functioning of a computer programme or a mathematical method that is implemented through software code as part of an invention that incorporates non-excluded elements would it be barred as the “technical advance” arises from an excluded category?
How is this different from the catena of Section 3(k) tests that have been proposed by the Courts, with some making their way into the draft guidelines? In 4.5.4 where the guidelines discuss “claims directed towards computer programmes” wherein and cite two cases, Farid Allani and one of the Microsoft cases (discussed here), which again, like Farid Allani, treats technical effect and contribution tests as interchangeable and provides for a technical problem and solution test. From my limited understanding, in EPO, such a test is conducted under the COMVIK approach in the context of inventive step. In subsequent paragraphs, the draft guidelines provide examples of what constitutes “technical effect”. The non-exhaustive list has been mostly taken from the 2013 guidelines, and the latest case developments in the case law have been updated to the lists that have been borrowed from the 2013 guidelines.
Now, the question arises as to what the difference is between the “technical effect/contribution” test conducted under Section 3(k) and the “technical advance” requirement under Section 2(1)(ja)? Are they the same or different? Is the distinction the relevance of prior arts in the analysis? By providing both these tests, is the Patent Office suggesting a two-tier test which involves assessing the “technicality” of an invention both under Section 3(k) and 2(1)(ja)?
Likewise, the level of scrutiny or treatment also might change with regards to whether the feature in question is treated as a “computer programme” an “algorithm” or a “mathematical or business method” (ABMs). As per-se only extends to computer programme and not ABMs. Thus, would the Patent Office have a stricter standard for “Computer programmes” than ABMs? One is not sure how these specific paragraphs in the draft guidelines would be implemented. This might also reflect an attempt, as is the case in EPO, to shift the substantive analysis to inventive step wherein the features of the claim are separated into technical and non-technical elements, and in reference to prior art, its patentability is judged (see here for more on what EPO calls the “Comvik approach”).
Yet, in the end, when summarising how the CRIs applications must be examined under the inventive step, the draft guidelines curiously do not refer to or mention the “technical advance” requirement, which it had discussed in the preceding paragraph.
Business methods cases went missing?
The only case that has been cited in reference to business methods is OpenTV; it is interesting to note the conspicuous absence of two cases, one of which is Priya Randolph v. Deputy Controller and Comviva Technology v. Assistant Controller (both discussed by Yogesh here and here). As Yogesh pointed out, both these cases deviate from OpenTV to the extent that OpenTV takes an “effects” approach, focusing on the end of the invention in question and not on how it is implemented. Priya Randolph and Comvira focus on the implementation of the invention in question, wherein the use of software and the necessary hardware to run it might convert an invention directed towards a business method into something patentable. Even though OpenTV might be correct in law, it pays credence to the fact that business methods are not qualified by per-se and that clever patent drafters cannot bypass this absolute bar by adding some software to make an invention that is directed to a computer programme. Yet, the draft guidelines do not mention these cases or the different approaches they take when compared to OpenTV to determine whether an invention is directed towards a business method.
Conclusion
Most probably within some months, this draft guidelines will come into effect and will be used as a guide by examiners and controllers to examine CRI applications. Yet compared to the previous 2017 guidelines, this draft guidelines doesn’t clarify much; instead, it raises a lot of questions. The observation in the Draft guidelines with regards to technical advance might be a step in the right direction, but unfortunately, it is not clearly articulated. The judicial precedents do not help but only add to the confusion, which is not the Patent Office’s fault. In the end, after one finishes reading the Draft guidelines, one is left as confusingly confounded as ever!
I wish to thank Swaraj and Yogesh for their comments on the post