The examination of software patents has been the subject of intense debate, in particular, the express bar on mathematical formula and business methods from being patented. And computer programmes “per se” also not being patentable. As per the ‘2013 draft Guidelines’ issued by Patent office, while computer programmes combined with general purpose machines were not patentable subject matter, however, computer programmes combined with ‘novel hardware’ could be considered patentable subject matter. The newly issued guidelines (2015 Guidelines) are an attempt to bring uniformity in the Patent office practice. A section of software industry has described it as imparting a boosting impact on the software industry and thus on the growth of the Indian Economy. On the other hand some have described this as attempt to change the Patent Act or bring about policy change without having legislative approval.
The guidelines that are stated to be applicable with immediate effect mean that the Patent examiners have to apply them for all pending applications and new applications. The guidelines broadly lay down the following pointers for determination of excluded subject matter relating to Computer Related Invention under Section 3(k).
- The substance of claims - taking the whole of the claims together, needs to be judged while ascertaining whether the matter falls under the exclusions of section 3(k).
- The claimed matter would be considered as novel if it involves a) a novel hardware or b) a novel hardware with a novel computer programme or c) 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.
- Further, the invention is likely to pass the barrier of section 3(k), if answer to ANY of the following questions is in affirmative:
- 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
Unlike the earlier issued guidelines which required a dedicated hardware system for the computer programme to overcome the “software per se” objection, the latest guidelines provide that a claim with a novel computer programme though with a known hardware component would likely to pass through the section 3(k) exclusion.
The guidelines also highlight that mathematical methods like calculations, formulation of equations and other methods directly involving mathematical calculation are examples of non-patentable matter. However, on the positive side, it is also emphasised that any computing or calculating machine, methods of encoding decoding, or any simulation methods employing mathematical methods would be patentable subject matter and the mere use of a mathematical formula in a claim, to clearly specify the scope of protection being sought, would not necessarily render the claim to be the “mathematical method”.
With regard to Business method, the guidelines state that mere usage of the words such as business, business rules, sales shall not lead to conclusion of a Computer Related Invention being just a “Business Method“, unless the subject matter of claim is essentially about carrying out a business/trade.
Overall subject matter exclusions have been narrowed and this may see increase in filing and speedy prosecution of the patent applications in the software domain.