Computer Related Inventions India IPO Indian Patent office Guidelines for Examination
The Indian Patent Office has recently published the guidelines for examination of Computer Related Invention (CRI) to provide uniformity and consistency in the examination of such applications. The patentability criteria for CRI are same as that of the other inventions namely the patentable subject matter, novelty, inventive step, utility and sufficiency of disclosure or enablement.
As a first step towards patenting the CRI, it should be seen whether it falls under the excluded patentable subject matter. Section 3(k) excludes mathematical methods or business methods or computer programme per se or algorithms from patentability.
Mathematical methods like method of calculation, formulation of equations, finding square roots, cube roots and all other methods directly involving mathematical methods are not patentable. With the development in computer technology, mathematical methods are used for writing algorithms and computer programs for different applications and the invention is claimed as one relating to the technological development rather than the mathematical method itself. However, mere use of a mathematical formula in a claim, to clearly specify the scope of protection being sought, would not necessarily render the claim to be mathematical method.
With unprecedented and accelerating growth in e-commerce, the issue of the protection of business concept has several concerns. The claims drafted not directly as “business methods” but apparently with some unspecified means are held un-patentable. However, if the claimed subject matter specifies an apparatus and/or a technical process for carrying out the invention even partly, the claims shall be examined as a whole. Only when in substance the claims relate to “business methods”, they are not considered to be a patentable subject matter.
Algorithms in all forms including a set of rules or procedures or any sequence of steps or any method expressed by way of a finite list of defined instructions are excluded from patentability.
The computer programmes as such are not intended to be granted patent. If a computer programme is not claimed by “in itself” rather, it has been claimed in such manner so as to establish industrial applicability of the invention and fulfils all other criterion of patentability, the patent should not be denied.
For being considered patentable, the subject matter 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 the normal interaction with such hardware and affects a change in the functionality and/or performance of the existing hardware.
United States became the first country to formally recognize patentability of software after Supreme Court ruling in Diamond v. Diehr case where it was held that the computer controlled process could be patentable even if the process whether controlled by other mean was already known, if the application of the programme used in the process was not obvious.
A computer program by itself or stored in some form is not eligible for patent protection. But if there is a machine or a process that makes a technical contribution to the existing technology, a patent cannot be denied on the sole ground that a computer program is involved in its implementation.
The present guidelines have provided the following as indicators to determine the technical advancement:
(i) whether the claimed technical feature has a technical contribution on a process which is carried on outside the computer;
(ii) whether the claimed technical feature operates at the level of the architecture of the computer;
(iii) whether the technical contribution is by way of change in the hardware or the functionality of hardware;
(iv) whether the claimed technical contribution results in the computer being made to operate in a new way;
(v) in case of a computer programme linked with hardware, whether the programme makes the computer a better computer in the sense of running more efficiently and effectively as a computer;
(vi) whether the change in the hardware or the functionality of hardware amounts to technical advancement.
If answer to any of the above questions is in affirmative, the invention may not be considered as exclusion under section 3 (k) of the Patents Act, 1970.
A few examples of claims have been provided to distinguish between the patentable and non-patentable computer related inventions.
It is clear that a computer program, when running on or loaded into a computer, going beyond the “normal” physical interactions between the software and the hardware on which it is run, and is capable of bringing further technical effect may not be considered as exclusion under the provisions of Indian Patent Act.
