On 30th June 2017, the Indian Patent Office issued guidelines for the examination of Computer-Related Inventions (CRIs). When these guidelines were first published in August 2015 and again in February 2016, but strong resistance from stakeholders made it put in abeyance. Eventually, the Ministry of Commerce and Industry appointed an expert committee for their recommendations, and through these recommendations, these guidelines came into existence. It is important to note that these guidelines do not constitute rulemaking and in cases of conflict between these guidelines and the provisions of the Patents Act 1970, (or rules made under) the said provisions of the Act and Rules will prevail over these guidelines.
The main aim of these guidelines is to foster uniformity and consistency of the examination of patent applications in the field of CRIs by the Indian Patent Office. It brings out clarity in terms of exclusions expected under section 3(k) so that eligible applications of patents relating to CRIs can be examined speedily. Various provisions related to the patent of computer-related inventions, which are discussed in these guidelines are:
- The procedure to be adopted by the Patent Office while examining such applications
- The jurisprudence that has evolved in this field
- Case laws relating to Computer-Related Inventions (CRIs) have also been incorporated
The binding nature of these guidelines on the patent application is questionable because it neither supersedes the Act nor case laws, but one may argue that these guidelines are binding on patent examiners, who act on behalf of the Controller. Reason being, while examining CRIs, the examiners are expected to follow these guidelines. Therefore, one can say that these guidelines are an indirect reflection of the Government’s stand on patents of CRIs. Rationality of examiners, during the issuance of examination reports granting or rejecting patents to CRI, will likely be in line with these guidelines.
Salient features- Computer Related Inventions
As compared to the earlier guidelines, one can say that the new guidelines are favorable towards grant of patents for CRIs. The primary difference between the two is the roster of “three-stage” test, prescribed for the patentability of CRI. The “three-stage” test is prescribed by the earlier guidelines quoted below:
(1) Properly construe the claim and identify the actual contribution;
(2) If the contribution lies only in mathematical method, business method or algorithm, deny the claim;
(3) If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability. (emphasis added)
Therefore, according to the previous guidelines, if the inventiveness lies only in software, the same is not patentable. The Joint Parliamentary Committee expressed that the three-stage test prescribed previously was against the legislative intent while dealing with CRI, and prescribed that “the computer programme may include certain other things” which may qualify them as inventions and hence be awarded patents.
Other features of the guidelines are as follows:
1) The new guidelines also exclude ‘integrated circuits’ as the patentable subject in Computer Related Inventions.
2) 4.4.1 which mentions sufficiency of the disclosure, in its description detailing about what should be the contents of the disclosure following portion is deleted: If these system/device/apparatus claims are worded in such a way that they merely and only comprise of a memory which stores instructions to execute the previously claimed method and a processor to execute these instructions, then this set of claims claiming a system/device /apparatus may be deemed as conventional and may not fulfil the eligibility criteria of patentability.
3) 4.5 which mentions the determination of excluded subject matter relating to CRIs following is added: Hence, along with determining the merit of invention as envisaged under Sections 2(1) (j), (ja) and (ac), the examiner should also determine whether or not they are patentable inventions under Section 3 of the Act.
4) 4.5.1 mentioning about claims directed as a mathematical method, following portion is added: mere manipulations of an abstract idea or solving the purely mathematical problem/equations without specifying a practical application also attract the exclusion under this category.
Also, such exclusions may not apply to inventions that include mathematical formulae and resulting in systems for encoding, reducing noise in communications/ electrical/electronic systems or encrypting/ decrypting electronic communications.
5) 4.5.4 mentioning about claims directed as “Computer Programme per se” following portion stands deleted: The computer programme per se is excluded from patentability under section 3 (k) apart from mathematical or business method and algorithm.
6) Chapter 08.03.05.10 of the Manual, containing provisions pertaining to section 3(k) of the Patents Act, 1970 shall stand deleted with coming into force of these Guidelines for examination of CRIs.