Friends,

The Patent Office, India, has published the DRAFT MANUAL OF PATENT PRACTICE & PROCEDURE (2005) at http://www.patentoffice.nic.in/ipr/patent/manual-2052005.pdf calling for submission of suggestions and to point to errors in the Draft Manual. The following is a draft list of suggestions we may send to the Patent Office in this regard. We have to send in the representation before 17th August, 2005, and so please feel free to comment, and send in points that may have been missed, asap.

Thanks, Ramanraj.

[1] Computer programs are not patentable: ========================================

Under Article 10 of the TRIPs Treaty,

<quote>

Computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention (1971).

</quote>

Accordingly, the Copyright Act, has substanital provisions dealing with the protection of computer programs as literary works, and the Patents Act, 1970, has explicitly excluded computer programs from the scope of patentability under Section 3 dealing with "Inventions not Patentable".

All conclusions, findings, practices and procedures proposed in the Draft Manual of Patent Practice and Procedure [herein after referred to as Draft Manual] as if computer programs may be dealt with as inventions "in combination of hardware" are ultra vires the Patents Act, 1970, and against our International obligations under the TRIPs Treaty, and therefore need to be corrected and rectified to avoid serious ramifications in the software industry and our relationship with other law abiding nations.

Suggestion: Please make it very clear in the Draft Manual that computer programs are not patentable.

[2] Annexure II:EXAMINATION GUIDELINES FOR PATENTABILITY OF COMPUTER- RELATED INVENTIONS and all portions incidental thereto in the Draft Manual

At page 156 of the Draft Manual, at the end of Annexure II, the following conclusion is found:

<quote>

9.CONCLUSION

The statute excludes from patentability the software per se. The inventions relating to the application of the computer program or software is held patentable under the Indian Patent Act, 1970 when claimed in combination of hardware and software components of a computer which provides a "technical advancement " over the prior art. It is necessary for the applicant to describe the "technical contribution" to the prior art when the invention involves software. The technical problem, which needs to be solved by the invention, should be sufficiently described as to how the hardware is controlled by the software to overcome the previously described problem. The "technical character" of the invention should be brought out clearly in the claims.

</quote>

The above conclusion is wrong for the following reasons:

(1) Computer programs are excluded from patentability, under the Patents Act, 1970 in accordance with the TRIPs Treaty, as already discussed herein above under the heading "[1] Computer programs are not patentable".

(2) The Draft Manual has placed reliance upon decisions of the US Supreme Court, which have not taken into consideration the provisions of the TRIPs Treaty, particularly with regard to computer programs. The US Supreme Court has not discussed the legal implications or the national obligations of the US Government in the light of the TRIPs Treaty, and those judgements cannot lend any support or reasons to conclude that computer programs are patentable. At best, the US judgements only help to conclude that the US has not kept up its international obligations under the TRIPs Treaty, and India, or other nations that trade with the US may raise this issue at the WTO to compel the US to conform to the TRIPs Treaty.

(3) All computer programs effectively work only in combination with hardware. Computer programs, by their very nature, may be easily re-written without modifying hardware, to enhance usability. It is unscientific to assume that some computer programs can work without hardware, and some work in combination with hardware, and as though they deserve a special treatment not in accordance with the Patents Act, 1970. The illustrations included in the Draft make arbitrary distinctions between computer programs without any rational basis:

<quote>

3(K) a mathematical or business method or a computer program perse or algorithms.

computer program product is claimed as "A computer program product in computer readable medium", "A computer-readable storage medium having a program recorded thereon", etc. In such cases the claims are treated as relating to software perse, irrespective of the medium of its storage and are not held patentable.

Examples in respect of other categories of subject matter are

Scheme or method of bookkeeping. Business method in the field of accounting. Method of tax collection. A contents display method for displaying contents on a screen, A method for controlling an information processing apparatus, for communicating via the Internet with an external apparatus, A method for transmitting data across an open communication channel on a wireless device that selectively opens and closes a communication channel to a wireless network, and each wireless device including a computer platform and including a plurality of device resources that selectively utilizes a communication channel to communicate with other devices across the network

All the above methods though utilise computer programs for its operation, are not computer programs as such and hence allowable

On the other hand, A method of executing a computer program, in which at least part of the copy of the program available for execution is analysed to determine whether or not any change has been made thereto, and in the event that a change is detected, a further copy of the program is retrieved and caused to be executed instead of the first copy, A method for generating a new computer program using a software development tool, These are the programs solely intellectual in its context and hence not allowable. The Guidelines for examination of Computer-related inventions are given in Annexure 2 <\quote>

"A scheme or method of bookkeeping" is a mere business method clearly not patentable.

"Method of tax collection" is not at all patentable, because tax collection methods are a sovereign function of the state, and no individual could claim any monopoly against the State in exercise of sovereign functions. In any event, they fall within the category of "business methods" excluded from the scope of patentability.

All the remaining illustrations, that include any claims over any computer program, algorithm, mathematical or business method are not patentable, as all computer programs could work only in combination with hardware, and more specifically, any computer program could be reduced into an algorithm. Both computer programs and algorithms are claims falling within the scope of Section 3 and therefore could not be treated as patentable inventions.

(4) Under Section 3 of the Patents Act, mathematical or business methods, algorithms, a presentation of information, a mere scheme or rule or method of performing mental act or method of playing game are all not patentable. Any useful computer program could be reduced into an algorithm, and when Section 3 is read as a whole, it is abundantly clear that computer programs are not inventions and are not patentable.

(5) Under Article 51 of the Constitution of India, the State shall "foster respect for international law and treaty obligations in the dealings of organised people with one another", and the Draft Manual ought not to dilute and water down well intended provisions in the Patents Act, to invite shame and ignomity to our country in the international arena.

Suggestion: Scrap Annexure II and the incidental references to it from the Draft Manual. Computer related inventions may be treated and processed like any other claim that may not fall within the scope of Chapter II of the Patents Act, 1970.

Conclusion: ==========

India has contributed significantly to the science of computation, and has a responsibility to take the lead in the right direction. Number system originated from India, and many fundamental insights into computing have been achieved only because of the freedom and high standards ingrained in our traditions, that abjure trading or monopolisation of knowledge. India has been the clearest voice against monopolisation and has advocated for the greatest freedom in trading practices, in the light of our own history, before the WTO and other International organisations. The TRIPs Treaty itself is a great compromise against our own highest national aspirations and deepest desires, and the least the Patent Office may do is, therefore frame practices and procedures, within the scope and ambit of the Patent Act, 1970.

For all the above reasons, we request the Patent Office to make changes in the light of the above suggestions, and to publish a fresh draft seeking fresh suggestions, before publishing and enforcing the practice the Draft Manual.