On the 19th of February Office of Controller General of Patents, Trademarks and Designs released new Guidelines for the examination of computer related inventions. These new guidelines were welcomed by the people who protested against the guidelines that were issued in 2015 and kept in abeyance due to the protests. The crux of the new guideline is the provision that the examiner should deny the patent claim if the contribution of the invention lay solely on a computer program.

The Guidelines in Brief:

The Guidelines in the Introduction defines the term Computer Related Inventions (CRIs) as inventions “which involve the use of computers, computer networks or other programmable apparatus and include such inventions having one or more features of which are realized wholly or partially by means of a computer programs or programs”. It also states that these Guidelines were chartered to ensure the smooth and uniform process of examination, and make the exclusions expected under Section 3 (k) of the Patent Act more transparent. Section 3 (k) of the Act (as amended) excluded mathematical or business method or a computer program or algorithms from qualifying as inventions under the Act. The Guidelines also define and detail inter alia the said terms making it clearer for both examiner and Applicant.

Examination Procedure: The Guidelines states that the examination procedure of patent application relating to CRIs are the same, though it requires greater scrutiny on the part of the examiner and theses guidelines focuses on this.

Test/ Indicators to determine Patentability of CIRs.

The Guidelines provide a three prong test to determine the patentability of a CRI. Which is as follows:

(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.

This test would act as a guideline for the examiners and ensure that patent is not granted to mere software. The granting of patent to software would otherwise result in not only a huge load of patent applications, but will also result in stalling the progress of others who wish to use the software for other purposes. These guideline act as a check on the patentability of software it gives prominence to new and novel hardware components along with a software to be granted a patent, while rejecting mere software.

In the section that follows, the Guidelines also provide illustrative cases showing of cases which were not granted patents.

The Guidelines were welcomed by The Software Freedom Law Center as well as iSpirit (Indian Software Product Industry Round Table) and Knowledge Commons, which had spearheaded the protest with respect to the earlier Guidelines and had advocated for the stricter examinations in line with Section 3 (k) of the Act. According  to them the previous Guidelines would have allowed a sting of Software to be granted patents that would not only be volatile of the statutory provisions but also work against the IT industry as well as the startup community. There would have been an increase in the number of patent litigation stalling the progress of many companies that have their base in Software.

Earlier it was the refusal of Compulsory License and now these Guidelines, it this an indication that the IP branch of the Indian Government, wants to push for more inventiveness from the Indians and to fulfill the make in India dream? These Guidelines do make it clear that a novel hardware with a software component would be readily granted a patent. Thereby encouraging inventiveness and innovation. Also, refusing patents to just software prevents monopolization, and helps the thriving start up community, which mostly thrives on Software.

The Guideline can be accessed at – link.

This article has been authored by Shwetha, an IP Law practitioner.