The Office of the Controller General of Patents, Designs and Trademarks (“CGPDTM”) issued revised Guidelines on Examination of Computer Related Invention(s) (“CRI(s)”) on 30th June 2017. With the issuance thereof, the office has proposed to bring much needed clarity and consistency in examination of patent applications for computer related inventions. A feat sadly which its predecessors could not achieve.
The present revised guidelines are the fourth version of the guidelines for examination of CRIs and have been made applicable with immediate effect. To better understand the objects, and reasons for notification of the revised guidelines, and appreciate the provisions set out thereunder, a brief revisit to the history books is essential.
By a notification dated 28th June 2013, the CGPDTM had laid open the forum for debating the guidelines for examination of CRIs. These were the 1st Guidelines which were issued as “draft CRI guidelines”, which were meant only for discussion and consultation with the stakeholders. These 1st Guidelines for the first time provided much needed clarity on the application of Section 3(k) of the Patents Act, 1970 (“Act”), by clarifying that business methods, mathematical methods as well as algorithms were not patentable, and for the first time introduced the concept of “technical effect” in reference to “technical advancement”, which itself is a requirement of inventive step under section 2(1)(ja) of the Act.
Subsequently, on 21st August 2015, based on the feedback received from the stakeholders on the 1st Guidelines, the IPO notified final guidelines. These were the 2nd Guidelines. By the 2nd Guidelines, the IPO reversed their earlier position i.e. as taken in the 1st Guidelines with respect to examination of computer programs and mathematical methods.
Inundated with many controversies, by a notification dated 14th December 2015, the 2nd Guidelines were put in abeyance later replaced by a notification dated 19th February 2016. This notification can be referred to as the 3rd Guidelines. The 3rd Guidelines introduced a new methodology of determining the patentability of CRIs, namely, a three-step test. To explain in greater detail, the 3rd Guidelines also listed several examples of non-patentable CRIs. More specifically, in connection with the three-step test, the third guidelines stated that “….. if the claims are in conjunction with novel hardware, the examiner should proceed to other steps to determine the patentability of the invention….”, thereby stipulating that novel hardware was a pre-requisite to patentable CRIs. These introductions resulted in the widely accepted strategic view that absence of novel hardware in the disclosure may render otherwise patentable CRIs non-patentable.
However, as a welcome move, the 4th Guidelines got rid of the three-step test for determining CRI patentability and along with it all pre-requisites, including that of novel hardware for a CRI claim to be considered patentable. As such, in absence of any tests or mandatory requirements, the 4th Guidelines have shifted the focus of patentability of CRIs on the underlying substance of the inventions. This is clear from a bare reading of the following excerpt from Paragraph 4.5 of the 4th Guidelines:
It is well-established that, while establishing patentability, the focus should be on the underlying substance of the invention and not on the particular form in which it is claimed. What is important is to judge the substance of claims taking whole of the claim together. If any claim in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium falls under the said excluded categories, such a claim would not be patentable. However, if in substance, the claim, taken as whole, does not fall in any of the excluded categories, the patent should not be denied.
Other takeaways from the 4th Guidelines include the following:
The potential allowance of a means plus function claim if the same is clearly defined with the help of physical constructional features in the complete specification.
The clarity with respect to claims directed towards “Mathematical Method”, by providing that the mere presence of a mathematical formula in a claim, to clearly specify the scope of protection being sought in an invention, may not necessarily render it to be a “mathematical method” claim. Also, that such exclusions may not apply to inventions that include mathematical formulae and result in systems for encoding, reducing noise in communications/ electrical/electronic systems or encrypting/ decrypting electronic communications.
The exclusion of claims directed to subject matter relating to the topography or layout of integrated circuits as patentable subject matter, thereby clarifying that the layout of integrated circuits cannot be claimed in conjunction with CRIs.
The removal of illustrative examples of patentable and non-patentable claims, thereby suggesting the inability of setting out clearly what are patentable and non-patentable claims in connection with CRIs, since doing so may attract unintended consequences. This is probably a boon for both the patent granting authority and the patent applicant.
In view of the above, our preliminary impressions are that the 4th Guidelines are a better and more coherent version of the much appreciated 2nd Guidelines, and have thankfully replaced the confusing and chaotic 3rd Guidelines.