New Delhi: Can Indian patent laws protect Artificial Intelligence (AI)-generated works and AI-solutions? In their current form, they may not.
However, the Delhi High Court has appealed to the government to take a relook at the patent law provisions “considering the march of technology in the digital space”, in a judgment passed 11 May.
The Patents Act, 1970, currently excludes, among other things, “business method” inventions or a “computer programme per se”, or algorithms from patentability.
In its judgment, the high court asserted that the provision needs a relook “in view of the growing innovations in the space”.
It noted that several inventions, in small and medium enterprises, start-ups and educational institutions, could be in the field of “business methods or application of computing and digital technologies”.
Justice Pratibha M. Singh directed the court registry to send a copy of the judgment to the Secretary in the Department for Promotion of Industry and Internal Trade (DPIIT), in the Ministry of Commerce.
Why does the law say and how has the court made a case for a relook at the existing patents legislation?
ThePrint explains.
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What does Patents Act say?
Section 3 of the Act lists things that are not “not inventions”, and consequently, cannot be granted a patent. Clause (k) of this excludes “a mathematical or business method or a computer programme per se or algorithms”.
“Business methods” include new ways and methods of doing business, including new types of e-commerce, and insurance.
The court explained that while dealing with applications involving a “business method”, the Patent Office or the court needs to consider whether the patent application addresses a business or administrative problem and provides a solution for it.
To understand whether an application wants to patent a “business method” or not, the court needs to look into whether the invention is primarily for enabling conduct or administration of a particular business – involving sale or purchase of goods and services.
Among other things, it also needs to look into whether the purpose of the invention is for claiming exclusivity or monopoly “over a manner of doing business”.
The provision also bars patenting of a “computer programme per se”.
The courts have, in the past, explained that a computer programme in itself cannot be patented, but when it shows a “technical effect or an advancement, or a technical contribution”, it can be granted a patent.
In a 2019 judgment, the Delhi High Court had explained that this bar does not apply to all inventions based on computer programmes.
It had observed: “Innovation in the field of artificial intelligence, blockchain technologies and other digital products would be based on computer programmes, however the same would not become non-patentable inventions — simply for that reason. It is rare to see a product which is not based on a computer programme. Whether they are cars and other automobiles, microwave ovens, washing machines, refrigerators, they all have some sort of computer programmes in-built in them.”
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What was the case before HC?
The applicant before the high court in the recent case was US-based company OpenTV Inc, which provides “interactive and enhanced television solutions”, and it provides these services by leveraging technologies.
It had applied to the Controller of Patents and Designs for a patent for a system and method to provide a “media item as a gift” in March 2012.
The company wanted to patent a system for users to give “media” as a gift to each other. The media could be a subscription for a service, a DVD, or any 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 Controller had said that since the company was financially gaining through sharing of media between users, it was a “business method” that the company was trying to patent.
The company had appealed to the high court, pleading that the Controller’s decision be set aside.
Examining the documents before it, the high court concluded that the invention in question is “purely towards a method of giving a media as a gift which is nothing but a method of selling a media for gift purposes and is hence a business method”.
It, therefore, upheld the rejection of the patent application.
In doing so, the court highlighted the need for a relook at the Act’s provisions, observing: “A large number of inventions in emerging technologies including SMEs, start-ups and educational institutions could be in the field of business methods or application of computing and digital technologies. There is a need to have a relook at the exclusions in Section 3(k) of The Patents Act, 1970, in view of the growing innovations in this space.”
‘So that patenting doesn’t become irrelevant’
In its order, the court referred to the 161st report on ‘Review of the Intellectual Property Rights Regime in India’ presented to Parliament by the Standing Committee on Commerce in 2021.
The report had asserted that The Patents Act, 1970, was “not well equipped to facilitate inventorship, authorship and ownership by Artificial Intelligence”.
The report had 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 a review of the existing provisions under both Acts “to incorporate the emerging technologies of AI and AI-related inventions in their ambit”.
The parliamentary standing committee was informed by various stakeholders that the protection of AI-generated works and AI-solutions should be permitted under patent laws in India as “as it would incentivise innovation and R&D, thereby significantly contributing to creativity and economic growth of the country”.
In its report, the panel stated: “The committee notes that the relevance and utility of cutting-edge technologies such as Artificial Intelligence and machine learning would increase manifold in the present world especially in the times of COVID-19 pandemic wherein digital applications are playing a crucial role in responding to the crisis.”
“Moreover, the huge 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 secured 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.
Referring to the parliamentary standing committee’s report, the high court asserted that there was an urgent need to “consider the march of technology in the digital space… so that patent law is not outpaced and patenting itself does not become irrelevant in the years to come”.
(Edited by Nida Fatima Siddiqui)
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