Introduction

The Patent Office has released another revised version of Guidelines for Examination of Computer Related Inventions (CRIs). The revised version thus modifies the Guidelines which were published in February 2016.

Patentability of computer-related inventions has been a contentious issue not only in India, but even in the United States where the bar for patentability for such subject matter was generally considered to be very liberal. Following the Supreme Court’s decision in Alice Corp. v. CLS Bank International, the USPTO has released various guidelines and examples to provide better guidance to applicants and examiners alike, faced with issues pertaining to the patentability of computer related inventions.

Initially released in 2013 as a draft, the first Guideline issued in August 2015 by the Indian Patent Office was revised in February 2016. The Guidelines released in February 2016, which was perhaps perceived to be the most restrictive, required the presence of ‘novel hardware’ as one of the criteria for assessing patentability under Section 3(k) of the Patents Act. The present revision has, however, removed this requirement and further clarifies the position on the patentability of computer-related inventions.

Overview of the Guidelines

Computer programs

Although few, the changes as a result of the recent revisions are bound to have a substantial impact as to how the patentability is to be assessed now when compared with the tests proposed by the previous version. The recent revisions have completely removed ‘novel hardware’ requirement. In addition, presence of contribution lying both in the computer program as well as hardware has also been withdrawn as the other requirement for assessing patentability of computer-related inventions under Section 3(k) of the Act. The ‘novel hardware’ requirement had created much debate. The legal validity of this requirement was also questioned particularly in the context of the decision of the IPAB in the case of Accenture Global Service Gmbh v. The Assistant Controller of Patents and Designs & Others. The IPAB in the case of Accenture had specifically held that the requirement of a ‘novel hardware’ is neither prescribed by the Act, nor by the Rules or the Manual of Patent Practise and Procedure.

The Guideline (both the previous and the present version) proposes that patentability under Section 3(k) is to be assessed based on the substance of the underlying invention rather than its form [See end note I]. The Guidelines continues and emphasizes the need for examining the claims as a whole in order to judge the substance of the invention. As per the Guidelines, if the substance of the claims falls within any excluded category, the subject matter would not be patentable. Determination of the substance of the claim is to be done by construing the claims [See end note II]. Once the claims have been construed and the substance of the claims determined, it may be assessed whether the substance of the claims falls within the category of a computer program per se. The Guidelines also refers the observations of the Joint Parliamentary Committee while deliberating on amendments to the Patents Act clearly indicating that any subject matter involving a computer program that includes certain other things ancillary thereto and developed thereon would be allowable if they are inventions. Although not further clarified, it may be concluded that subject matter involving computer-related inventions cannot be held as non-patentable solely because they are implemented using computer programs.

Besides the ‘substance over form’ test, the Guidelines further provide broad categories of subject matter which would qualify as computer program per se, and hence would not be patentable:

(i) Claims directed at computer programmes/ set of instructions/ Routines and/or Sub-routines.

(ii) Claims directed at “computer programme products” / “Storage Medium having instructions” / “Database” / “Computer Memory with instruction” stored in a computer readable medium

The above categories specifically list claims which are directed to software code or any media embodying such code, would be held as non-patentable.

By and large, and particularly owing to the omission of the ‘novel hardware’ requirement, it appears that the Guidelines are more liberal in determining the applicable standard for computer program per se.

The present version of the Guidelines is definitely a step in the positive direction, particularly for innovation in the field of computing and software technology. Moreover, the basis for assessing patentability appears to be similar to that applied in foreign jurisdictions such as the United Kingdom. This appears to be logical considering that the provisions in the UK Patents Act of 1977 and the Patents Act have provisions which are pari materia, and also appears to be consistent with the approaches laid down in various UK decisions [See end note III].

Business Method

The Guidelines emphasizes that use of business related terms such as “enterprise”, “business”, “business rules”, “supply-chain”, “order”, “sales”, “transactions”, “commerce”, “payment”, or the like, in the specification or claims alone would not invoke the present objection. The Guidelines have provided a more objective standard for assessing whether the subject matter pertains to a business method. As per the Guidelines, if the claimed subject matter involves a specific apparatus or implements a technical process, then the subject matter would have to be examined as a whole. In such a case, if the substance of the invention does not relate to a business method then it is likely that the subject matter under consideration may be patentable. This also is consistent with the principles laid down by the IPAB in the case of Yahoo v. Controller. The IPAB in the case of Yahoo held the subject matter to be non-patentable as the ‘technical advance’ of the claim fell within the excluded category, i.e., was a business method.

The Guidelines make it clear that only if the subject matter is essentially focusing on business related activities would not be patentable.

Algorithm

The Guidelines unfortunately still do not provide any specific clarity in this regard. As per the present wording, any step or series of steps intended for solving a problem would be excluded under Section 3(k). It is quite clear that such a sweeping conclusion would not have been intended. However, so far the Controllers have not been applying this interpretation literally.

Mathematical Methods

The recent revisions have also further clarified the position in relation to mathematical methods. The Guidelines have clarified that mere presence of a mathematical formula in a claim may not necessarily be a “mathematical method” claim. The Guidelines further provide that inventions may include mathematical formulae but result in systems implementing technical processes such as encoding, reducing noise in communications/ electrical/electronic systems or encrypting/ decrypting electronic communications, would be patentable and not be treated as mathematical methods. This change is likely to reduce objections which were being raised for such invention.

Other aspects

The Guidelines have provided various bases for determining novelty, inventive step, industrial applicability and sufficiency as well. These seem to be generally consistent with legal principles in this regard. The revisions have also removed all illustrative examples. As would be recalled, the examples exemplified only such subject matter which was held to be non-patentable. None of the examples provided any examples reciting subject matter which is patentable under section 3(k). Although dropping the negative examples is generally desirable, inclusion of certain positive examples would have aided examiners during the substantive examination of the applications.

Conclusion

The present Guidelines are definitely a step in the positive direction and are least controversial. These Guidelines will encourage filing of patent application in India in the field of computer-related inventions and will also work towards reducing the ambiguity in the present area.