The guidelines for the examination of Computer Related Inventions (CRIs) were issued by the Indian Patent Office 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 rule making. In case of any conflict between these guidelines and the provisions of the Patents Act, 1970 or the Rules made there under, the said provisions of the Act and Rules 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 in accordance as per the provisions mentioned in Indian Patents Act, 1970.
The aim of this document is to provide guidelines for the examination of patent applications in the field of CRIs by the Indian Patent Office so as to further foster uniformity and consistency in the examination of such applications. The objective of this document is to 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 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 has also been discussed. Various examples and case laws relating to Computer Related Inventions (CRIs) have also been incorporated for better understanding of the issues involved from the perspective of the Patent Office.
The salient features of the guidelines (as compared to 2016 guidelines) – computer related inventions:
1) The CGPTDM has removed the tests notified in the 2016 guidelines.
2) The new guidelines also exclude ‘integrated circuits’ as patentable subject in Computer Related Inventions.
3) 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.
4) 4.5 which mentions about 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.
5) 4.5.1 mentioning about claims directed as mathematical method, following portion is added: mere manipulations of abstract idea or solving 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.
6) 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.
7) 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.
8) These guidelines are applicable with immediate effect.
The guidelines in detail can be accessed from here
For any other information please contact Intepat.