The “CRI Guidelines” for examination of computer-related inventions (CRI), published by the Indian Patent Office (IPO) on February 19 are currently under review. While some have supported it, there has been criticism from various stakeholders.

The guidelines make it necessary that a novel hardware be defined in conjunction with a computer program if the claims relate to a computer program. The terms “novel hardware” mentioned in the guidelines refer to a hardware having constructional novelty such as novel circuitry, novel elements and novel structure. Thus, while the statute bars patentability of computer program per se , the guidelines go beyond this and bar any computer program that is not per se a program/algorithm and mandate novel hardware to be a part of the inventive technical feature.

BusinessLine spoke with top lawyer Jyoti Sagar, Managing Partner, K&S Partners, the intellectual property arm of J Sagar Associates on the implications of the proposed guidelines.

What is actually implied by ‘per se’ and & “novel hardware” clause in the new guidelines?

Per se is a Latin word which literally means “by itself” or “as such”. So software per se implies that the algorithm or the source code as such is not patentable but has to have some technical effect so that it ceases to be per se . So, we are close to European system unlike the US where the software is patentable like any other invention.

The term “novel hardware” mentioned in the guidelines refer to a hardware having constructional novelty such as circuitry, elements and structure. Thus, while the statute bars patentability of computer program per se , the guidelines go beyond this and mandates novel hardware to be a part of the inventive technical feature. This is not the correct impression. If a software is just more than the mathematical formula and thus produces a technical effect not essentially combined with the novel hardware, it must be patentable. For example, if you had a software which when you apply gives clarity of sound in your headphones, it must be patentable.

Is the “novel hardware” requirement of the sole reason for hue and cry over new guidelines?

Most of the things these days are not hardware driven. We need to appreciate that the whole world is moving towards software innovation. There are enough data points to establish that companies are investing less and less in hardware and essentially weaving innovating software around existing known hardware to do new things. So, innovation is primarily in software space with comparatively minimal innovation in hardware space. CRI Guidelines will hopefully be revised after the review in an appropriate manner.

What would be the impact if the guidelines are not modified?

The immediate market impact of extant CRI Guidelines is that global innovator companies are circumspect about India in the area patent protection.

The guidelines are being perceived as a measure to protect certain sections of domestic interests.

Wouldn’t it be detrimental to the larger segment of the Indian companies also?

Even Indian companies, including several major IT service providers, are not happy with CRI Guidelines. This is evident from the submissions they have made at various fora.

These companies have heavily invested on innovation in last few years, graduating from pure play IT services to product development.

They are trying to move up the value chain. The mid-size and start-up IT community in India is any way focused on product development.

So, they are expected to face difficulty when it comes to obtaining patent protection and patent valuation. Therefore, even the domestic IT companies big or small or start-up – are adversely affected by these guidelines. In long run, it may impact the overall innovation ecosystem in India.

Will this further damage the international view of India’s IPR regime?

Good IP regime spurs the investments, not just the foreign but also domestic because if you are building technology based on innovation led economy whether it is some start up or say digital India then obviously the fundamental thing is that you are able to protect your IP properly. While copyright only protects the copying of the expression of an idea, patent provides protection against any making, using, selling, or importing the patented software invention granted in the claims.

Thus, copyright law, for example, will not prevent the creation of a parallel program that utilises the same ideas as the original program.

Now whether the protection must be under software that is patented or copyrighted that is what we are debating. So in the patent sphere, the width and length of protection varies as patent protection is 20 years and the protection is wider but copyright is granted for 60 years for a specific code.

So where you have a high reliance of industry on software that has technical effect, they are not interested in saving it for 60 years because things change rapidly, the innovation is so much these days that the particular code doesn’t help.

What is important is whether you have written a code that gives a technical effect or not. So efficiency is reached out these days in ways, for example, where the machine consumes less fuel or is environment-friendly, and all of these are software driven and not by some new machine.

Hence, that is indeed the area of concern as to what kind of protection is given and what shape it takes.

What specific suggestions do you have for the policy?

I think the requirement of essentiality of defining “novel hardware” is misplaced and must be withdrawn.

Rather the test should be that if the software produces tangible technical effect then it should be patentable subject matter. September 2015 guidelines were thus more progressive, modern and meaningful as software is everywhere and you just cannot do away with it.

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