In a classic instance of how software-related innovations are entangled in the realm of Indian laws when it comes to patent protection, notwithstanding the revised guidelines brought out in 2017, the country’s patent office has rejected an application by social media behemoth Facebook for a method to provide category-specific electronic content.
The Delhi patent office dismissed the Mark Zuckerberg-founded company's patent application titled 'analysing a query log for use in managing category- specific electronic content', citing Section 3(k) of the Indian Patent Act - a section that excludes mathematical or business methods or computer programme per se or algorithms from being patented.
The patent office raised objections and pointed out that Facebook has not clearly distinguished the features that are different from the cited "prior art". The subject matter of claims does not constitute an invention under Section 2(1)(j) of the Patents Act, 1970 (as amended), because it doesn’t have a novel feature and doesn’t involve an inventive step, the patent office pointed out.
Rejecting the application, Ankur Agarwal, assistant controller of Delhi patent office, said: "Without prejudice to objection under Section 2(1)(j), the subject matter of claim as filed in the instant application falls within scope of clause (k) of Section (3) of the Patents Act, 1970 (as amended). Claims are a set of sequences used to implement an algorithm, without disclosing any constructional or structural feature."
Though patenting of software was not allowed for a long time in India due to restrictions in the patent laws of the country, to cope up with the demand and to boost innovation and safeguard the rights of inventors, the Indian Patent Office had evolved detailed guidelines for patenting computer-related inventions, commonly known as software innovations, in 2017.
According to the guidelines for examination of Computer Related Inventions (CRIs), the examiners are required to judge the substance of claims considering the claim as a whole. If any claim in any form such as method, process, apparatus or system fall under the said excluded categories, such a claim would not be patentable. However, if in substance, the claims, taken as whole, do not fall in any of the excluded categories, the patent should not be denied, the norms said, signalling that software claims with novel hardware features could be considered. Arguing its case for patent, Facebook submitted that corresponding applications in the US, Australia, China and Japan have proceeded to be granted patentship, which further establishes the novelty, inventiveness and industrial applicability of the present invention.
The social media giant submitted that claims cannot be brought under the purview of Section 3(k) of the Patents Act. The method relates to providing category-specific electronic content, which is not mere mathematical or computer programmes executed on a processor. Rather, it is a technical method implemented over a network constituting a client device and a server, it said.
"There are definite technical steps or exchange of information over said network between said entities, which clearly establishes that the claimed method is not mere execution of computer programmes. For implementation of present invention, the exchange of information between the client device and the server is essential, and the technical effect of the present invention is achieved using the information which is received by the server over the network, which includes the logged query submission time and logged category attributes," the company said.