The Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM) has re-issued a set of guidelines applicable to Examination of Computer Related Inventions (CRIs) on February 19, 2016. The aim of these guidelines are to “further foster uniformity and consistency in the examination of CRIs” and “bring out clarity in terms of exclusions expected under Section 3(k) so that eligible applications of patents relating to CRIs can be examined speedily”. The guidelines are being hailed as a welcome development by various IT think tanks who had opposed the August, 2015 guidelines issued by the Indian Patent Office (IPO) related to CRIs.
IPO in August, 2015 issued guidelines pertaining to Examination of CRIs which allowed patenting of software, a hitherto contentious issue for the software industry at large. The guidelines were met with heavy opposition from a lobby of various IT stakeholders who were concerned about the detrimental effect on IP innovators writing code against infringing action by multinational companies. The guidelines were also criticized for bypassing the explicit provisions of Section 3(k) of the Indian Patents Act which excludes: “a mathematical or business method or a computer program per se or algorithms” from patentability. However, in December, 2015, after significant pressure exerted by several IT groups, including appeals made to the Prime Minister’s Office, the Indian Patent Office stayed the guidelines, paving way for the current substantially amended revised guidelines.
The main provisions of the revised guidelines are highlighted below:
- Computer programs per se are excluded from patentability
- Three step test for determining patentability of CRI has been laid down which include:
- Properly construe the claim and identify the actual contribution;
- If the contribution lies only in mathematical method, business method or algorithm, deny the claims;
- 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 claims. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.
- If the patent application relates to apparatus/system/device i.e. hardware based inventions, each and every feature of the invention shall be described with suitable illustrative drawings. 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.
- If, however, the invention relates to ‘method’, the necessary sequence of steps should clearly be described so as to distinguish the invention from the prior art with the help of the flowcharts and other information required to perform the invention together with their modes/ means of implementation.
- The working relationship of different components together with connectivity shall be described.
- The desired result/output or the outcome of the invention as envisaged in the specification and of any intermediate applicable components/steps shall be clearly described.
- Claims which are directed towards computer programs per se are excluded from patentability such as, (i) Claims directed at computer programmes/ set of instructions/ Routines and/or Sub-routines. (ii) Claims directed at “computer programme products” / “Storage Medium having instructions” / “Database” / “Computer Memory with instruction” i.e. computer programmes per se stored in a computer readable medium.