New Delhi: Can Indian patent law protect works and AI-solutions generated from Artificial Intelligence (AI)? In their present form, they cannot be.
However, the Delhi High Court, in a judgment passed on May 11, has appealed to the government to re-look at the provisions of the patent law “keeping in view the evolution of technology in the digital space”.
The Patents Act, 1970 currently, inter alia, excludes “business method” inventions or “computer programs per se”, or algorithms from patentability.
In its judgement, the High Court emphasized that the provision needed to be re-looked “in the light of growing innovations in the space”.
It noted that many inventions in small and medium enterprises, start-ups and educational institutions may be in the area of ”business methods or applications of computing and digital technologies”.
Justice Pratibha M. Singh directed the court’s registry to send a copy of the judgment to the secretary of the Department for Promotion of Industry and Internal Trade (DPIIT) in the commerce ministry.
Why does the law say so and how has the court made a case for revisiting the existing patent law?
ThePrint explains.
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What does the Patent Act say?
Section 3 of the Act lists things that are “not inventions”, and as a result, cannot be patented. Its clause (k) excludes “a mathematical or business method or a computer program per se or algorithm”.
“Business Ways” includes new ways and means of doing business, including new types of e-commerce and insurance.
The court clarified that while dealing with applications involving a “business method”, the patent office or the court is required to consider whether the patent application addresses a business or administrative problem and provides a solution for the same. Is.
In determining whether an application seeks to patent a “business method,” the court needs to look at whether the invention is primarily intended to enable the operation or administration of a particular business—including goods and services. Involves the sale or purchase of services.
Among other things, it needs to be seen whether the object of the invention is to claim exclusivity or a monopoly “on a way of doing business”.
This provision also prohibits patenting of “computer programs per se”.
In the past, courts have explained that a computer program cannot be patented, but that it can be patented when it shows “technical influence or advancement, or technical contribution”.
In a 2019 judgement, the Delhi High Court clarified that this bar does not apply to all inventions based on computer programs.
It was observed: “Innovations in the field of artificial intelligence, blockchain technologies and other digital products will be based on computer programs, although this will not be a non-patentable invention – for that reason alone. It is rare to see a product that is based on a computer program.” No. Be it cars and other automobiles, microwave ovens, washing machines, refrigerators, they all have some or the other computer program in-built.
What was the matter before the High Court?
The applicant before the High Court in the recent case was US-based company OpenTV Inc., which provides “interactive and advanced television solutions”, and provides these services by leveraging technologies.
It applied to the Controller of Patents and Designs for a patent for a system and method for providing “media items as gifts” in March 2012.
The company wanted to patent a system for users to give each other “media” as gifts. Media can be a subscription to a service, a DVD, or some other form of media.
However, its patent application was rejected by the controller in May 2021 citing Section 3(k) of the Patents Act.
The regulator had said that since the company was deriving financial benefits through sharing of media among users, it was a “business method” that the company was trying to patent.
The company appealed to the High Court seeking to set aside the decision of the Controller.
Earlier examining the documents, the High Court concluded that the invention under consideration is “purely a method of giving a media as a gift, which is nothing more than a method of selling the media for the purposes of the gift”. and therefore it is a business method”.
Therefore, it upheld the rejection of the patent application.
In doing so, the court highlighted the need to revisit the provisions of the Act, observing: “A large number of inventions in emerging technologies, including SMEs, start-ups and educational institutions, are in the area of business methods or computing. and digital technologies.The exclusion of Section 3(k) of the Patents Act, 1970 needs to be reconsidered in view of the growing innovations in this area.
‘so that the patent does not become irrelevant’
In its order, the court referred to the 161st report on ‘Review of the Intellectual Property Rights Regime in India’ to be submitted to Parliament by the Standing Committee on Commerce in 2021.
The report claimed that the Patents Act, 1970, was “not well equipped to facilitate invention, authorship and ownership by Artificial Intelligence”.
The report made specific reference to section 3(k) to highlight the “need to review the provisions of both the legislations (the Patents Act, and the Copyright Act) on a priority basis”.
It had recommended review of the existing provisions under both the Acts “to include emerging technologies of AI and AI-related inventions within their purview”.
The Parliamentary Standing Committee was informed by various stakeholders that protection of AI-generated works and AI-solutions should be allowed under patent laws in India as “it will encourage innovation and R&D, thereby increasing the country’s creativity and significant contribution to economic development.
In its report, the panel said: “The Committee noted that the relevance and utility of cutting-edge technologies such as artificial intelligence and machine learning will increase manifold in the current world, especially in times of the COVID-19 pandemic, in which digital applications are playing .. an important role in responding to the crisis.”
“Moreover, the enormous benefits of AI and its applications in India’s revenue generation and economy as well as its impact on technological innovation necessitate its expansion in a safe manner,” it added.
The committee recommended that a separate category of rights for AI and AI-related inventions and solutions should be created for their protection as intellectual property rights.
Quoting the report of the Parliamentary Standing Committee, the High Court asserted that there was an “urgent need to consider the march of technology in the digital space…so that patent law does not move forward and patents themselves are not rendered irrelevant in the years to come” Go”.
(Editing by Nida Fatima Siddiqui)
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