Modified Guidelines for Examination of Computer Related Inventions_India
The revised guidelines for the examination of the patent applications in the domain of computer related inventions (CRI) was recently published by the Indian Patent Office. The notable changes in the modified guidelines are as follows:
Section 3(k) of the Indian Patents Act excludes mathematical or business methods, algorithms and computer programs per se from the scope of patentable subject matter. The interpretation of the words “per se” has been the subject of much controversy. The following has been inserted in the new guidelines:
Claims directed as “Computer Programme per se”: Claims which are directed towards computer programs per se are excluded from patentability, like (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 legislative intent to attach suffix per se to computer programme is evident by the following view expressed by the Joint Parliamentary Committee while introducing Patents (Amendments) Act, 2002:
“In the new proposed clause (k) the words ”per se” have been inserted. This change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon. The intention here is not to reject them for grant of patent if they are inventions. However, the computer programmes as such are not intended to be granted patent. This amendment has been proposed to clarify the purpose.”
Tests/Indicators to determine Patentability of CRIs as given in the Guidelines 2016:
Examiners may rely on the following three stage test in examining CRI applications:
(1) Properly construe the claim and identify the actual contribution;
(2) If the contribution lies only in mathematical method, business method or algorithm, deny the claim; (3) If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention.
The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability
The above has been deleted in the revised guidelines.
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