By Piyush Sharma & Pulkit Doger
In accordance with the Indian Patents Act, 1970 (‘the Act’), Section 3 lists what are not considered to be inventions and therefore, non-patentable. Section 3(k) reads as follows:
"3. The following are not inventions within the meaning of this Act,
(k) a mathematical or business method or a computer programme per se or algorithms."
The Manual of Patents Practice and Procedure (MPPP), with regard to Section 3(k), cites that ‘mathematical methods’ are acts of mental skill. Therefore, a method of calculation, formulation of equations, finding square roots, cube roots and all other methods directly involving mathematical methods are not patentable. With developments in computer technology, mathematical methods are used for writing algorithms and computer programs for different applications and the claimed invention is sometimes camouflaged as one relating to the technological development rather than the mathematical method itself. These methods, claimed in any form, are considered to be non-patentable.
Recently, with the increasing interest shown by various multi-national organizations in the Indian market, a significant increase in the filing of inventions involving the implementation of mathematical methods has been seen in India. While in the US and UK patent law has historical jurisprudence in this field, the merits of the statutory provisions in India relating to this aspect have not been tested so far. This article aims to analyze the most recent decision of the Intellectual Property Appellate Board (IPAB) in a case which may shed some light on the examination of inventions relating to mathematical methods in India.
Electronic Navigation Research Institute v. Controller General of Patents and Designs
Hot on the heels of the draft guidelines, released by CGPDTM on 28 June 2013, on examination of computer related inventions, the IPAB, on 5th July 2013, ruled on the bar on patenting of mathematical methods, in Electronic Navigation Research Institute
v. Controller General of Patents and Designs
. The IPAB upheld the Deputy Controller’s order which declined to accept the technical effect theory followed under European patent law and agreed with the Deputy Controller’s reasoning that the Indian patent law does not provide for patents for mathematical methods even if the mathematical methods include a technical effect.
The appellant’s patent application titled “A Chaos Theoretical Exponent Value Calculation system” pertains to a system for analyzing a time series signal based on Chaos Theory and for calculating a chaos theoretical exponent value (CTEV) thereof. The application mentions that the conventional CTEV calculation system assumes that the time series signal being analyzed is stable and is not chaotic. However, certain signals, such as a generic speech voice signal has temporarily changing dynamics as a plurality of vowels change in a complex manner in a short period of time. This makes analysis of generic speech voice signal, using conventional systems, difficult. The applicant claims that his invention makes it possible to calculate a CTEV that could not have been so far processed in a dynamics-changing system and to perform the process thereof at a high speed and on a real time basis, and to calculate a CTEV even from a time series signal which includes noises. The amended claims submitted by the appellant are as follows:
“1. A system for analyzing speech voice signal comprising:
- a reading means (xi) for reading a speech voice signal to be subjected to a chaotic analysis;
- a cutting means (xi) for cutting out said read speech voice signal for each processing unit for calculating a chaos theoretical exponent value of said read speech voice signal, wherein said calculating means (xi) for calculating a chaos theoretical exponent value comprises:
- a first calculation means for calculating a chaos theoretical exponent value with respect to said sampling time as a microscopic chaos theoretical exponent value, in said cut-out speech voice signal at a processing unit, and
- a second calculation means for calculating the chaos theoretical exponent value of said speech voice signal with respect to a predetermined time as a macroscopic chaos theoretical exponent value, based on said microscopic chaos theoretical exponent value.
2. The system for analysing a speech voice signal as claimed in claim 1, comprising a means for receiving, as parameters, an embedding dimension D, an embedding delay time td, an expansion delay time te, a size of neighbourhood points set N, and the shortest period Tm and the longest period TM of said speech voice signal; wherein said means for cutting out said speech voice signal for each processing unit cuts out a speech voice signal for each processing unit x=x(i) from said speech voice signal based on Equation 2 as herein described, where, when said read speech voice signal is s=s(t), to and t1 in Equation 2 are given as t0 and t1 satisfying a periodicity condition predetermined by Equation 3 as herein described.”
Before the IPAB, the appellant alleged that the Deputy Controller had not substantiated the objection under Section 3(k) till the date of hearing. On the date of hearing, the Deputy Controller decided to reject the patent application as it related to a mathematical method. The IPAB stated that it was unable to comprehend what the appellant meant by saying that the objection was not substantiated. The IPAB stated that it is for the Controller to raise the objection and it is for the applicant to substantiate his case. The IPAB also stated that the Controller decides the objections and the reasons for the same need not be found in the order. The IPAB did not allow the appeal on this ground but stated it would be better if the Controller elaborates the reasons for the objections so as to provide clarity.
The IPAB’s order also mentions the landmark cases of the United Kingdom which now forms the basis for determining the patentability of computer implemented inventions in the UK. The IPAB specifically referred to Symbian v. Comptroller of Patents. The IPAB seems to support the view that if there is “some technical advance on the prior art in the form of a new result, such as a substantial increase in processing speed” it might be possible to obtain a patent.
The appellant, on a different ground, stated that the Deputy Controller had wrongly negated the ‘technical effect” and further incorrectly held that Indian patent law did not follow the EPC. The IPAB referred to its previous landmark case on the patentability of business methods, namely, Yahoo v. Rediff, where a similar ground was raised. The IPAB reiterated its previous stand and stated that inventive step, which is a technical advance compared to the existing knowledge, should be associated with a feature which is not a part of excluded subject matter itself. The IPAB reiterated that the applicant, by citing economic significance or technical advance in relation to any of the excluded subjects, cannot insist upon grant of patent thereto.
The IPAB also seemed to endorse the decision in T. 543/2006 where it was held that:
“It cannot have been the legislator’s purpose and intent on the one hand to exclude from patent protection such subject matter, while on the other hand awarding protection to a technical implementation thereof, where the only identifiable contribution of the claimed technical implementation to the state of the art is the excluded subject-matter itself.”
Considering the facts of the current case, the IPAB concluded that the technical advance mentioned in the specification was “a mathematical method for solving mathematical claims which are further based on various algorithms.” Thus, the contribution of the applicant was within the scope of subject matter excluded from patentability under the Indian Patent Law. The IPAB upheld the Deputy Controller’s order and reasoning that just because a mathematical method is a technical advancement over the state of the art it cannot overcome a rejection under Section 3(k).
It will also be interesting to see further development on interpretation involving Section 3(k) as the issues still lacks clarity.
[The authors are, respectively, Associate and Senior Associate, IPR Practice, Lakshmikumaran & Sridharan, New Delhi ]