India is well-known for its booming software industry. To keep pace with this development, the Indian Intellectual Property Office has recently issued guidelines for examination of Computer Related Inventions (CRI) specifying what subject matter is patentable. Prior to the advent of these guidelines (draft guidelines were released in 2013), there was no specific provision dealing with patenting of CRIs.
Thus, the guidelines provide the much needed clarity on examination of CRI patent application and other technicalities involved, having immediate effect. The Patents Act does not define the term ‘Computer related Invention’. It is defined in the guidelines as “those inventions which require of computer, computer networks, or other programmable apparatus and including such inventions, one or more features of which are realized wholly or partially by means of computer program/programs”. It encompasses of four broad categories viz. method/process, apparatus/system, computer readable medium and computer program product. Section 3 of the Act lists down subject matter that cannot be patented, and Section 3(k) there under specifically states that “computer program per se” is not patentable. In common parlance, “per se” means by or in itself, suggesting that CRIs are not patentable in themselves but with incorporation of hardware components accompanied by a novel and non-obvious technical application to the industry.
The main highlights
The examination procedure of patent applications relating to CRIs shall remain common with other inventions to the extent of considering novelty, inventive step and industrial applicability.However, in order to attain acceptance for the CRIs claims, the application should fulfil the stipulation of ‘technical advancement’.
The guidelines lists grounds which would preclude the claims from exceptions under section 3(k), such as –
- whether the claimed technical feature has a technical contribution on a process whether the claimed technical feature has a technical contribution on a process which is carried on outside the computer;
- whether the claimed technical feature operates at the level of the architecture of the computer;
- whether the technical contribution is by way of change in the hardware or the functionality of hardware;
- whether the claimed technical contribution results in the computer being made to operate in a new way;
- In case of a computer programme linked with hardware, whether the programme makes the computer a better computer in the sense of running more efficiently and effectively as a computer;
- whether the change in the hardware or the functionality of hardware amounts to technical advancement.
As per the guidelines, Method/Processes include business methods, computer methods, mathematical methods/algorithms etc. Any method which involves a monetary transaction, mere marketing strategy or sale purchase methodology is a business method which is categorically excluded from patentability. Claimed inventions regarding mathematical formulae and algorithms are often masqueraded as technical advancement. Since they are mostly regarded are ‘acts of mental skill’, they are beyond the scope the patentability under the Act. Mathematical methods like calculations, formulation of equations and all other methods directly involving mathematical methods like solving advanced equations of mathematics etc. are examples of what is not patentable. On the other hand, any computing or calculating machine, methods of encoding decoding, or any simulation methods employing mathematical methods are examples of subject matter that is patentable.
It is hopeful that these guidelines would accelerate the momentum of software innovations in India considering they would now have better legal protection.