Intellectual property (IP) rights are incentives that fuel innovation and creativity in our ecosystem, however, they are not universal. laws are territorial in nature, hence something patentable in the US may not get protection in India and vice versa. Therefore, it is highly probable that when any invention falls outside the eligibility compartments established under the patent law, it is not patentable. The US judiciary with Alice Corp. v. CLS Bank, S. Ct. (2014), had interpreted the patent eligibility criteria in a narrower sense w.r.t computer-related inventions (CRI). while the Indian Judiciary with Ferid Allani v. Union of India has widened the scope of patentability. This write-up analyzes the repercussions of Alice’s case, and compares and contrasts the CRI in India and the US.
The Building Blocks
With Alice’s case, the Court limited the patent eligibility standards under 35 U.S.C. § 101 for CRI. It applied the mayo test in the context of software. The Supreme Court in Mayo v. Prometheus (2012) a judicial exception of ‘Law of Nature’ that applied besides the novelty and obviousness patent eligibility criteria. The two-step test (1) applied in Alice’s case held that the mere application of abstract ideas using the software will not make a patentable. The narrowing down could be taken as a step to trim off unreasonable CRI applications pending with the USPTO. However, this was done without specifying what would amount to an abstract idea. Now, the task was to show that the invention, however, built on an abstract idea is more than just the idea itself. This inevitably introduced uncertainty within the concerned industry.
The Infused Uncertainty
With Alice’s decision, the invention industry felt a shockwave as the Court had been strict while interpreting the patent eligibility thresholds. Below mentioned are a few repercussions of the decision that significantly affected the predictability of software .
1. An invention to secure a had to pass the threshold of the trinity of novelty, prior art, and non-obviousness. However, with this decision, the courts stepped in to analyzing the scope of claims. This allows the Courts to inspect even the technical aspects of a claim.
2. In the Post-Alice environment, it is a struggle to secure a for a software-related invention because now the USPTO will reject a CRI blueprint unless it specifically mentions the procedure used to travel from the ‘functionally’ to ‘the code written to achieve this functionality’. In other words, a CRI to get a must lie somewhere in between the claimed functionalities and the code, and this makes describing a CRI a challenging task.
3. On a conjoint reading of the above, it becomes apparent that the business models, engaged in aggregating known parameters/functionalities and making them available in one e-frame, are struggling the most to get a .
4. Undoubtedly, computer software fuels the engine of the Fourth Industrial Revolution, but the distractions surrounding USPTO and lower courts have increased the cost and decreased the quality of a .
5. In 2019, the USPTO attempted to clear the confusion associated with Alice’s decision by issuing guidelines to explain the evaluation process of the claims for eligibility under 35 U.S.C. 101.
The Crossover Journey of CRI patenting
The jurisprudence of computer-related inventions getting patent protection in India is now moving in a direction where it may cross path with the US regime, to some extent. The recent Delhi High Court decision in Ferid Allani v. Union of India interpreted section 3(k) of the Indian Patent Act in the light of the 2016 Guidelines indicating the patentability of CRI in India. It was held that “per se”, in sec. 3(k), should not disturb the patentability of genuine computer-based inventions. This judgment overnight changed the fate of CRI in India, now we have moved from a complete ban to a bit relaxed regime providing room for genuine CRI. The Court observed that the ‘technical contributions shall be examined before rejecting a CRI patent application’. But again, it did not address which inventions can be said to reflect ‘technical contribution’.
The US patent law does not prohibit computer-related inventions to secure patent rights unless otherwise disqualified, on the contrary, the Indian patent law, prior to Ferid Allani’s case, specifically bars CRI from patentability. The US innovation sector after Alice’s decision has faced threats of uncertainty. Meanwhile, in India, Ferid Allani’s decision to some extent has brought certainty and hope for inventors of CRI. In other words, with the judicial interpretation, in the US many pending patent applications were rejected while in India many applications may become eligible for a patent.
The patentability of a CRI, apart from the statue’s requirements, now largely depends on the quality of the patent application and the intelligent of patent claims. These swards help an inventor to successfully defend her case in the courts. It is worth noting that even after roughly six years of Alice’s case the confusion surrounding the subject matter eligibility is deteriorated and hampered the speed invention, now that we are in the age of machine learning and IoT. The economy demands a categorically clear picture regarding the CRI patenting regime owing to the financial aspects of .