Guidelines for Computer-Related Inventions
The Indian Patent Office issued the guidelines for examining Computer-Related Inventions (CRIs) on 30th June 2017. These guidelines were first published in August 2015, but due to strong resistance from stakeholders, these were put in abeyance and were re-issued in February 2016. But the resistance continued, and eventually, the Ministry of Commerce and Industry handed over the matter to an expert committee for their recommendations. At that time, the experts forecasted that the guidelines issued in August 2015 would place the Indian Software Industry at the mercy of MNCs.
These new guidelines came into existence after considering the recommendations from the expert committee. However, these guidelines do not constitute rulemaking. In case of any conflict between these guidelines and the provisions of the Patents Act, 1970, or the Rules made thereunder, the said provisions will prevail over these guidelines. The guidelines are subject to revision from time to time based on interpretations by Courts of law, statutory amendments, and valuable inputs from the stakeholders.
These guidelines seem to be more by the provisions mentioned in the Indian Patents Act 1970.
This document aims to provide guidelines for examining patent applications in the field of CRIs by the Indian Patent Office to further foster uniformity and consistency in examining such applications. This document aims to clarify the exclusions expected under section 3(k) so that eligible applications of patents relating to CRIs can be examined speedily.
The guidelines discuss various provisions relating to the patentability of computer-related inventions. The procedure to be adopted by the Patent Office while examining such applications and the jurisprudence that has evolved in this field have also been discussed. Various examples and case laws relating to Computer-Related Inventions (CRIs) have also been incorporated for a better understanding of the issues involved from the perspective of the Patent Office.
The salient features of the guidelines (as compared to the 2016 guidelines) – computer-related inventions:
1) The CGPTDM has removed the tests notified in the 2016 guidelines.
2) The new guidelines exclude ‘integrated circuits’ as a patentable subject in Computer Related Inventions.
3) 4.4.1, which mentions sufficiency of the disclosure in its description detailing 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 fulfill the eligibility criteria of patentability.
4) 4.5, which mentions the determination of excluded subject matter relating to CRIs following is added: Hence, along with determining the merit of the 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.
5) 4.5.1 mentioning claims directed as a mathematical method, the next portion is added: mere manipulations of an abstract idea or solving a 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 result in systems for encoding, reducing noise in communications/ electrical/electronic systems, or encrypting/ decrypting electronic communications.
6) 4.5.4 mentioning 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.
7) Chapter 08.03.05.10 of the Manual, containing provisions about section 3(k) of the Patents Act, 1970, shall be deleted with these Guidelines coming into force for examining CRIs.
8) These guidelines are applicable with immediate effect.
The guidelines in detail can be accessed here,