The Indian Patent office (IPO) had earlier issued guidelines on 21 August 2015 to Patent Examiners relating to the examination of computer related inventions (CRIs). Subsequently, the IPO vide its order dated 14 December 2015 abruptly kept these guidelines in abeyance. On 19 February 2016, the IPO passed an order issuing revised guidelines for the examination of CRIs.
Similar to the earlier guidelines, various technical terminologies in relation to CRIs have been defined by relying upon either the Information Technology Act 2000 or general dictionary meanings. The guidelines further elaborate on the sufficiency and types of disclosures required for CRIs. The guidelines also set out fifteen illustrative examples of claims which are not patentable. However, no examples of patentable claims have been provided.
Further, as per the guidelines, while examining CRIs, the focus of the Patent 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. 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 be applied:
- 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.
These guidelines seem to be another attempt by the IPO to streamline the examination of patent applications in the field of CRIs.