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28 Oct 2015

New guidelines for examination of Computer Related Inventions (CRIs)

Software Patenting has always been somewhat of a mystery in India. Confusion and misunderstanding have prevailed across not only Indian software experts but also amongst Indian Patent Attorneys and Indian Patent Examiners. There have been some guidelines for examination of Software patents in the past; however, they did not help much because those guidelines did not provide explicit criteria to identify and distinguish what did not fall under the ambit of “software patent”.

The Office of Controller General of Patents has recently issued new guidelines for examination of computer related inventions[1] (CRIs), and more specifically, software and related applications.  

These guidelines aim to bring uniformity and consistency in examination procedures adopted by Patent examiners dealing with CRIs. However, even these guidelines do not constitute rules and in case of any conflict, the provisions of Indian Patents Act, 1970 and its corresponding Patents Rule shall prevail.

The essential elements of the new guidelines are reproduced below:

“For being considered patentable, the subject matter should involve either

  • a novel hardware, or
  • a novel hardware with a novel computer programme, or
  • a novel computer programme with a known hardware which goes beyond the normal interaction with such hardware and affects a change in the functionality and/or performance of the existing hardware.

A computer program, when running on or loaded into a computer, going beyond the ‘normal’ physical interactions between the software and the hardware on which it is run, and is capable of bringing further technical effect may not be considered as exclusion under these provisions.

Indicators to determine “technical advancement”

While examining CRI applications, the examiner shall confirm that the claims have the requisite technical advancement. The following questions should be addressed by the examiner while determining “technical advancement” of inventions concerning CRIs:

  • 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 the 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 hardware or functionality of hardware amounts to “technical advancement”.

If the answer to ANY of the above questions is in affirmative, the invention may not be considered as exclusion under Section 3(k) of the Patents Act, 1970.

A departure in policy is evident from the previously narrow and restrictive interpretation to one that now provides greater scope for patenting of computer related inventions.   An analysis of the revised CRI Guidelines indicates that Section 3(k) of the Indian Patent Act has been relaxed in order to promote software based invention and industries.

A couple of examples are discussed below to understand the greater scope for patenting computer related inventions under the revised guidelines.

Example 1: The patent application related to a computer-implemented method had always been a bone of contention between the applicant/agent and the patent examiner. The patent examiners generally raised the objection that the claimed method is “substantially algorithmic” and “there is no new component contributing to the advancement of the hardware” as such. But the new guidelines indicate allowance of “a novel computer programme with a known hardware”. This makes computer-implemented methods eligible for the grant of patents.

Example 2: Patent applications related to user interfaces aimed at improving user experience using an application module were generally objected to. The examiner generally held that the invention for improving user experience lay in the software running in the background and that as such the application module is not patentable. But the new guidelines state that patent applications related to a novel computer programme with a known hardware which goes beyond the normal interaction with such hardware and affects a change in the functionality and/or performance of the existing hardware” are allowable. Viewed in this context, it appears that new software modules for improving user experience introduced by way of mobile applications appear to be allowable.

This broadening of scope for software patents is not only going to help startups but also MNCs with R&D and manufacturing facilities in India. This move towards allowing software patents in India is a significant step towards protecting software patents in India and promoting the research in field of software applications across industries. We believe that the new guidelines will further boost India’s efforts to become a hub for innovative, technology-led startups as well as accelerate programs such as Digital India. This step will also go some way in signaling India’s intent to streamline its IPR laws- a key element in making it easy to do business in and from India.

 

The article is based on secondary research, including information available on the internet. The views expressed in this article are the authors’ personal views and not the firm’s opinion on the subject. No part of this article should be taken as legal opinion or advice.

[1] http://www.ipindia.nic.in/iponew/CRI_Guidelines_21August2015.pdf

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