Continuing the discussion on the Blackberry cases (here and here) after Yogesh’s post, Bharathwaj Ramakrishnan writes on the Court’s new test for inventions incorporating algorithms and explores whether there is a distinction between computer programmes and algorithms. Bharathwaj is a 3rd year LLB Student at RGSOIPL, IIT Kharagpur and loves books and IP. His previous post can be accessed here.
Patenting at the Frontiers, Algorithms and Section 3(k)
By Bharathwaj Ramakrishnan
Recently, a post covered the two Blackberry cases that dealt with Section 3(k) in the context of algorithms. The post by Yogesh explained how, in one case, the Court sided with the Controller in the question of whether the suit patent attempts to cover a pure algorithm, while in another case, the invention was beyond an algorithm or a computer programme and hence patentable. I wish to touch upon two aspects of the judgements, Section 3(k) and algorithms. Firstly, from reading the judgment and the post it is clear that the Court in Blackberry I and Blackberry II has developed a narrower and a very specific test of patentability for inventions incorporating algorithms following Ericsson. It is unclear whether this is distinct from catena of tests that exists in the context of computer programmes (see here for a detailed discussion of the various versions of the test) even though Blackberry I goes to the extent of saying they are distinct. Secondly, I wish to show the difficulties that exist in classifying an invention having claims which in substance are incorporating or directed to an algorithm or a computer programme and conclude that the Courts will be having a difficult time drawing the distinction.
A New, Narrower and a Specific Test for Algorithms?
In Yogesh’s post he showed how in Blackberry I the Court, following Ericsson, had adopted one of the prongs of the test provided in Ericsson for claims that incorporate algorithms. He also showed how the reasoning is a bit similar to the approach adopted in the US. It’s anyone’s bet on whether this test is distinct from the ones applied for inventions classified as computer programs even though the Court in Blackberry I states something along those lines. Wherein it observed that if the invention was to have software implementation, then it would be treated as a computer programme and that test relating to computer programmes would be applied (Para 52). I wish to highlight one aspect of the test is its emphasis on showing some form of effect or change or improvement on hardware and one can notice that in both the Blackberry cases (Para 32 in Blackberry I, Para 52 in Blackberry II) the Court zeroed in on whether there was a substantial change in hardware or whether there was improvement in functionality of hardware and if an invention is incorporating an algorithm then an effect on hardware is necessarily to be shown to clear bar on patenting under Section 3(k).
Thus, the two-step test for algorithms as developed in Blackberry I and II can be restated as follows:
- Whether the claims merely incorporate an excluded category? (In this case, algorithms.)
- Whether the invention has any impact or improvement in the functioning of the hardware? (Relying only on one prong of the Ericsson Test.)
Thus, it is clear that the tests employed in Blackberry cases are narrower than the ones propounded in Ericsson in the sense that the Court had adopted a test wherein asks the applicant to show that there should be substantial change in hardware or the functionality should be improved for inventions incorporating an algorithm. Absence of such change or improvement led to the suit patent in Blackberry I being barred by Section 3(k) while the suit patent in Blackberry II cleared the bar. Now it is unclear why the Court chose the requirement that there should be change/improvement in functionality of hardware for an invention incorporating algorithms to be patentable in contrast to the freewheeling catena of tests that exists for computer progammes.
Distinguishing Algorithms and Computer Programmes, a Dicey Business?
Now that I have shown there might be a specific requirement that inventions classified as “incorporating an algorithm” have to pass, it makes one wonder whether the distinction between algorithms and computer programmes is as straightforward as it seems.
As HLA Hart observed in his seminal paper on legal positivism (here), ” Fact situations do not await us neatly labeled, creased, and folded, nor is their legal classification written on them to be simply read off by the judge. Instead, in applying legal rules, someone must take the responsibility of deciding that words do or do not cover some case in hand with all the practical consequences involved in this decision.” (Page 607) Thus it makes one question how does the Court come to the conclusion of whether an invention is incorporating an algorithm or a computer programme?
The above question gains significance when one realises that the claim structure incorporating an algorithm or a computer programme might look very similar. For example if one looks at the suit Patents, one can notice both the suit claims have system and method claims similar to a claims directed to a computer programmes (CRI guidelines 2017, Part 4.4.4) and that they have servers, databases, and processors as part of the claim which are common elements which can be found in any claims directed or incorporating a computer programme. The guidelines 2017 also understood the difficulty in drawing this distinction when it (here) stated: “While the judgment of mathematical methods or business methods is comparatively easier, it is the computer programme per se or algorithms related inventions that require careful consideration of the examiner.”(Part 4.4.4) and the distinction gets obscured more when the guidelines observe that claims directed at computer programmes would be claimed in a form of steps akin to an algorithm (Part 4.5).
The Court in Blackberry cases relied on the complete specification (CS) to decide the matter. In the context of Blackberry I the Court concluded the claims are directed towards a series of programmatic steps; this decision was reinforced by the specific terms and explanations provided in the CS. As the Court observed, “the terms policy agent, communication policy, interoperating instructions, clearly suggest that the invention relates to an algorithm which regulates the flow of information.” (Para 49)
In my previous post, I had criticised the observation made by the Court that the invention was directed towards a set of instructions predicated on if-else logic and that even computer programmes have if-then logic and thus whether this feature can serve to distinguish between the two. The fact that claims in the suit patent in Blackberry I seem to have programmatic steps (Para 51) makes sense when one reads the guidelines as that is how CRI inventions are claimed at a certain level of abstraction (see here where Prof Mark Lemly in page 920 provides a series of software claims that too read like programmatic steps or a series of steps to achieve a result). In Blackberry II wherein, the Court relied on the CS but concluded that the invention had algorithmic steps and some form of software implementation and yet applied the two-step test and concluded that the invention is not barred by Section 3(k) and while not conclusively deciding whether the invention itself would fall under the judicial class of algorithm or computer programme. Thus, it is unclear as to how the Court will distinguish between an invention incorporating a computer programme or an algorithm or has both to some measure. As in both the Blackberry cases it can be gathered that some form of software implementation was present (Blackberry I the Controller in his order a portion of which was reproduced by the Court in para 28 stated that the invention had software implementation and that the Court’s conclusion that it is a set of programmatic instructions based on if-else logic is slightly problematic and in Blackberry II the Court never conclusively decided on the matter).
CRIs and heterogeneity and its related problems: As Brad Sherman observes in his wonderful book (see here) software-related inventions are defined by their heterogeneity wherein he observes, “software is quintessentially a heterogeneous technology: meaning that software is inextricably linked to a larger social-technical system that includes machines (computers and their associated peripherals), people (users, designers and developers), and processes (the corporate payroll system, for example).” (page 130) Then he posits the issue Patent law faces in dealing with subject matter like CRIs that patent law cannot “embrace an open-ended view of techno-scientific objects”. When determining the legal nature of subject matter “patent law needs to reduce the open-ended, fluid, and heterogeneous technology into something that is both closed, demarcated, and predictable”. (page 130)
Thus, from the above paragraph it is clear any invention that has an algorithm or a computer programme is most likely to be part of a “larger socio-technical system” of servers or databases or other similar hardware. This similarity in the type of hardware, claim structure and manner of claiming would make drawing the neat distinctions law requires difficult. This is only made evident by the fact how the claims incorporating an algorithm or a computer programme might not look much different. One can see these tensions play out in Blackberry II wherein the Court never conclusively decided whether the invention incorporated an algorithm or a computer programme. Thus, with the Court not giving a clear way in drawing the distinction and the fact that drawing this distinction made it difficult because of the nature of the subject matter itself. One begs the question when does an invention incorporate an algorithm?