On 28th June 2013 the Indian Patent Office (IPO) issued draft guidelines on the examination of patent applications related to computer-implemented inventions. The IPO has invited comments and suggestions on the guidelines by 19th July 2013.

Patent applications related to computer-implemented inventions are examined in light of the embargo on the patentability of computer programs per se under Section 3(k) of the Patent Act. In recent years, different branches of the IPO have used different criteria to determine patentability, novelty and inventive step in computer-implemented inventions. The guidelines aim to bring uniformity and consistency to the examination of applications for computer-implemented inventions across various branches of the IPO. The guidelines also suggest a procedure to be adopted by examiners while examining applications for computer-implemented inventions. The guidelines also cite various decisions of the controller and the courts to highlight issues related to the examination of applications for computer-implemented inventions, and discuss the jurisprudence developed while allowing or rejecting such applications.

The draft guidelines start by highlighting the amendments made to sections of the Patent Act which are of relevance to applications for computer-implemented inventions. The Patent Amendment Act 2002 introduced the present form of Section 3(k) (dealing with mathematical or business methods, computer programs per se or algorithms) into the act. The guidelines highlight that the Patent Amendment Ordinance 2004, which amended Section 3(k) and allowed the patenting of the technical application of a computer program in an industry and the patenting of a combination of a computer program and hardware, was allowed to lapse. The Patent Amendment Act 2005, which finally amended the Patent Act and made it compliant with the Agreement on Trade-Related Aspects of IP Rights, did not modifySection 3(k) as amended in 2002. The guidelines state that the lapsing of the Patent Amendment Ordinance and subsequent enactment of the Patent Amendment Act 2005 showed the legislature’s intention to retain the original scope of exclusion of Section 3(k) and disallow its widening. However, the 88th Report on the Patent and Trademark System in India, which was presented in the Upper House of Parliament in October 2008, highlighted the need to define clearly the meaning of "per se”, as mentioned in Section 3(k).

In order to interpret the statute, the guidelines referred to other Indian acts – primarily the Information Technology Act 2000 – for the definition of terms generally used in applications for computer-implemented inventions, such as "computer system", "network", "data", "information", "function" and "computer program". If a term is not defined by any Indian statute, the guidelines use the ordinary dictionary definition of the term.

The draft guidelines also define the terms "technical effect" and "technical advancement". "Technical effect" has been defined as a solution to a technical problem which the invention, taken as a whole, overcomes. A non-exhaustive list of examples of technical effect, as provided in the guidelines, includes higher speed, reduced hard-disk access time, more economica memoryl use, more efficient data search or compression techniques, improved user interface and improved transmission or reception of radio signals. The guidelines define "technical advancement" as a contribution to the state of art. The guidelines highlight that technical advancement always involves a technical effect, but that not all technical effects need result in technical advancement.

The guidelines also discuss the various types of claim used in computer-implemented invention applications – namely, system claims, method claims and computer-readable medium claims – and provides a number of examples to illustrate the manner of examination of various types of claim. The guidelines state that as per the legislative intent, there is a blanket ban on inventions which are mental acts, aesthetic creations, mathematical or business-related methods, algorithms, methods of playing games and methods of presenting information.

The guidelines also state that the mere combination of a computer program with hardware does not take a computer program outside the purview of Section 3(k). As per the guidelines, a computer program in combination with a general purpose known computer is not patentable. The examiners have been advised to exercise caution in determining the integration of novel hardware with a computer program. The guidelines have further stated that determining whether the hardware is program specific or whether the program is hardware specific is important, as a computer program which may work on any general purpose known computer is not patentable. The hardware associated with the computer must be more than a general purpose machine. If the hardware is novel, claims related to the hardware in combination with a novel or known computer program will be considered patentable when such claims pass the triple test of novelty, inventive step and industrial application. The guidelines seem to encourage novelty in hardware to overcome rejections under Section 3(k).

The guidelines also state that in determining the patentability of computer-implemented invention-related applications, examiners should rely on the substance of the claim rather than its form (ie, wording used in claims to disguise computer-implemented inventions should not make an otherwise non-patentable claim patentable). Interestingly, the guidelines state that claims in means-plus-function form will be rejected unless the structural features of such means are disclosed in the specification. While this is standard practice in the United States, the guidelines provide no legal basis for such rejection.

It is clear that the draft guidelines are non-binding. In case of any inconsistency between the guidelines and the Patent Act, the Patent Act will prevail. Some of the guidelines may amount to "law-making" considering the limited level of jurisprudence available in India and, to this extent, the guidelines may appear to make the patentability of the computer-implemented inventions more stringent than intended. Comments from stakeholders and the final version of the guidelines are still awaited. However, the guidance is a welcome attempt to make the examination of computer-implemented invention applications as uniform as possible.

This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.