China & India take steps to make software patenting easier
China and India recently revised their patent office guidelines for the examination of software-related inventions. In both cases the guidelines broaden the scope of patent eligible subject matter and generally create a positive climate for patenting software-related inventions. In light of the US Supreme Court’s decision in Alice Corp. v CLS Bank International, which has made software patenting in the US more challenging, it may now actually be easier to obtain a software-related patent in China and India than it is at home.
The revisions to the Chinese Guidelines for Patent Examination did not come as a complete surprise. In fact, they clarified and confirmed the direction that the State Intellectual Property Office of China (SIPO) had been taking over the past several years to allow limited types of software and business method patenting.
The revised guidelines directly address business method-related inventions and provide that claims directed to a “business model” are allowable, provided that the claims recite technical features. Thus, while business methods per se are patent ineligible, the addition of suitable technical features, especially if the features are of a physical nature, should be sufficient to overcome rejection on the grounds that the invention does not relate to patent-eligible subject matter.
The guidelines adopt the same permissive policy toward inventions related to computer programs. The guidelines distinguish between computer programs per se, which are excluded from patentability, and computer program-related inventions, which are patentable. As a result, a computer program may be a component of an apparatus claim, and it may be possible to claim elements such as a computer program product, a machine-readable medium, or a medium plus computer program process. What remains imperative is that the claims recite technical solutions, since non-technical solutions remain outside the scope of patentable subject matter.
Although not yet tested by the courts, the revised Examination Guidelines no doubt make it easier to obtain software patent protection in China. The guidelines entered into effect on April 1, 2017.
The establishment of the Indian Guidelines for Examination of Computer Related Inventions (CRIs) followed a somewhat crooked path. The Indian Patent Office (IPO) first published a draft version in June 2013. The IPO sought comments from stakeholder groups and it issued final guidelines, which were more permissive than the draft version, in August 2015. Without specifying why, the IPO put the August 2015 guidelines “in abeyance” in December 2015, and it issued a revised, more restrictive set of guidelines in February 2016. In response to strong objections from many in the Indian software community, the Indian Department of Industrial Policy and Promotion, to which the IPO reports, convened an expert committee to engage in stakeholder consultations and make recommendations. The current guidelines, which were released on June 30, 2017, reflect the recommendations of the expert committee, and they mark a return to the more permissive guidelines embodied in the August 2015 version.
One of the harshest elements of the February 2016 guidelines was a requirement that a computer-related invention had to be claimed in conjunction with novel hardware, and if that requirement was not met, the invention was unpatentable regardless of other factors. The revisions removed the novel hardware requirement, and instead the guidelines instruct examiners to focus on the underlying substance of the claims taken as a whole. Thus, computer programs per se and algorithms remain excluded subject matter, but “the mere presence of a mathematical formula in a claim” or “the mere presence of words such as ‘enterprise’, ‘business’ [or] ‘business rules…’ should not lead to the conclusion that the claims are automatically excluded.
China and India have made considerable strides in dealing with the challenges of software patenting. Perhaps it is time that the US followed suit.