The Indian Patent Office (IPO) has once again revisited the guidelines for examination of Computer Related Inventions (CRIs) and issued revised guidelines on 30 June 2017 (Revised Guidelines). The Revised Guidelines is the third version of the CRI guidelines and have been made applicable with immediate effect. The first version of the guidelines were issued on 21 August 2015 (First Guidelines) and were later replaced by the guidelines issued on 19 February 2016 (Second Guidelines).
Briefly, according to the First Guidelines, for CRIs to be considered patentable, the subject matter of the CRIs 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 normal interaction with such hardware and affects change in functionality and/or performance of the existing hardware. The First Guidelines also required that claims be assessed from the point of view of technical advancement based on certain indicators.
Subsequently, the First Guidelines were replaced by the Second Guidelines. The Second Guidelines required that the focus of the examiner should be on the underlying substance of the invention and not the particular form in which it is claimed. The claims should be properly construed and the actual contribution of the claim must be identified, and if the contribution lies only in a mathematical method, business method or algorithm, the claims are to be denied. However, if the contribution lies in the field of computer programmes, the following tests should to be applied for CRIs:
- If the claims are in conjunction with novel hardware, the examiner should proceed to other steps to determine the patentability of the invention;
- If the contribution lies solely in the computer programme, the claim should be denied; and
- If the contribution lies in both the computer programme as well as the hardware in question, the examiner should proceed to the other steps involved in assessing patentability.
While the Revised Guidelines are fairly based on the Second Guidelines, the aforementioned tests/indicators to determine patentability of CRIs have been done away with. In this context, the Revised Guidelines do not expressly lay down any specific tests, indicators or determinants on patentability of CRIs. Additionally, illustrative examples on non-patentable and patentable claims have also been removed. Accordingly, it may be construed that the Patent Examiner should focus on the underlying substance of the invention and not the particular form in which it is claimed.