With the new set of guidelines for examination of CRIs, the IPO aims to lay down a standard set of procedures, which the Examiners examining the patent applications corresponding to CRIs are required to adhere to. The complete guidelines can be viewed here:

 http://www.ipindia.nic.in/iponew/ draft_Guidelines_CRIs_28June2013.pdf

The guidelines summarize the terms/definitions which are often used while dealing with patentability of computer related inventions as follows:

The term ‘computer’ is defined as “any electronic magnetic, optical or other high-speed data processing device or system which performs logical, arithmetic, and memory functions by manipulations of electronic, magnetic or optical impulses, and includes all input, output, processing, storage, computer software, or communication facilities which are connected or related to the computer in a computer system or computer network”. The term ‘computer’ is also defined as an electronic or similar device having information processing capabilities.

The term ‘computer network’ is defined as the interconnection of one or more computers through the satellite, terrestrial line, microwave or any other communication media, and also as terminals or a complex consisting of two or more interconnected computers whether or not the interconnection is continuously maintained.

The term ‘computer system‘ is defined as a device or collection of devices, including input and output support devices and excluding calculators which are not programmable and capable of being used in conjunction with external files, which contain computer programs, electronic instructions, input data and output data, that performs logic, arithmetic, data storage and retrieval, communication control and other functions.

The term ‘Computer Related Inventions (CRIs)’ is defined as any invention that involves the use of computers, computer networks or other programmable apparatuses and including such inventions, one or more features of which are realized wholly or partially by means of computer programme/programmes.

The IPO has reiterated that mathematical and business methods and algorithms are not patentable. “Mathematical methods”, according to the guidelines, are considered to be acts of mental faculty. The method of calculations, formulation of equations, finding square roots, cube roots and all other methods directly or indirectly involving mathematical methods are therefore, held non-patentable. The IPO observed that these mathematical methods are used for writing algorithms and computer programs for different applications and the claimed invention is often camouflaged as one relating to the technological development rather than the mathematical method itself. The IPO has concluded that these methods, claimed in any form, if they in substance relate to mathematical methods, are considered to fall under the purview of non-patentable subject matter.

The guidelines also state that “business methods” claimed in any form are not patentable. The term ‘business methods,’ according to the IPO, involves the whole gamut of activities in a commercial or industrial enterprise relating to transaction of goods or services and with the development of internet technologies, many business activities have grown through E-commerce and related B2B and B2C business. It is viewed that the claims are at times drafted not directly as business methods but apparently with hitherto available technical features such as internet, networks, satellites, telecommunications, etc. Therefore, if in substance the claims of a CRI relate to a business method, they will not be considered patentable even if the claims are implemented using a technological framework. Notably, claims relating to electronic funds transfer will be considered as business method claims.

With regard to inventions involving novel computer hardware, the same could be claimed without any difficulty as a system/device. In the event of absence of any novel hardware components and in the event of a general purpose computer running a ‘novel’ computer program, the examiners are instructed to reject the claims as being claiming nothing but computer program per se.

The term ‘per se,’ though not defined in the Act, has the dictionary meaning “by itself,” which suggests that the term ‘per se’ signifies an entity which exists on its own rather than in connection with other things. Thus, according to the IPO, computer program by itself is not patentable, but with a combination of hardware components (hardware limitations like processor, memory, interfaces) a computer program will prima facie be considered patentable. This to a large extent is an agreeable proposition. However, the IPO goes further and places the additional requirement that the hardware must be more than a general-purpose computer. What is clearly not patentable is a novel feature existing in the lines of code.

Further, according to the IPO, in an application for a patent for a new hardware system, the examiners need to consider “as to how integrated is the novel hardware with the computer program.” Going by this reasoning, if a computer program is loosely integrated, like application level programs which require minimal or no integration with the hardware, then the program will be considered non-patentable no matter how novel, inventive and industrially applicable it is. Further the examiner needs to consider whether the machine is program specific or the program is machine specific.

An overview is provided of the applications for computer related inventions and broadly the applications are categorized into four categories, namely:

1 Method/process

2. Apparatus/system

3. Computer readable medium and

4. Computer program product.

1. Method/process:

Computer related inventions carrying claims with a preamble “method/process for…” are claimed in a method/process format. While deciding the patentability of method/process claims pertaining to computer related inventions, it becomes necessary to determine whether the claimed process/method relate to any particular technological field. The method/process claim has to be adjudged based on the technical advancement over the prior art, and also based on the fact whether the claimed method/process relates to a particular field of technology or a particular technological innovation. While determining whether a particular process/method claims relates to a particular field of technology, it is pertinent to note that section 3(k) of the Indian Patents Act, 1970 explicitly excludes mathematical/business methods, computer programs per se and set of algorithms from patentability, since the claims pointing out to the aforementioned aspects are considered not to relate to any particular field of technology.

2. Apparatus/system:

Computer related inventions (CRIs) starting with a preamble “system/apparatus for…..” are classified as system/apparatus claims. These claims are often crafted in a ‘means+function’ format. In case of such claims, the Examiner is required to ascertain whether the claimed subject matter relates to any system/apparatus which is novel, inventive and has industrial applicability. The guidelines require an applicant to clearly define the inventive constructional/hardware features. The guidelines also state that an apparatus/system claim can also define a specific application (in terms of a process) rather than reciting a general application.

3. Computer program product:

The guidelines assert that the claims relating to computer program product are nothing but computer program per se, simply expressed on computer readable storage medium (CD, DVD etc), they are excluded from patentability.

Examination Procedure

As far as the examination procedure for computer related inventions is concerned, the examination procedure for such patent applications remains the same as far as considerations to novelty, inventiveness and industrial activity are concerned. An additional step involved in the examination of computer related inventions is determining whether the subject matter of the CRI falls under the purview of non-statutory subject matter detailed in section 3(k) of the Indian Patents Act, 1970, which states that “ a mathematical or business method or a computer programme per se” is not patentable.

The guidelines state that Novelty is the foremost requirement to determine the patentability of any invention, including computer related inventions. The guidelines also state that the determination of novelty in respect of CRIs is no different than in respect of an invention in any other technological field.

The Inventive step of a CRI is also to be determined in accordance with the pre-established guidelines provided in the Indian Patents Act, 1970. The act defines ‘inventive step’ as a “feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art”. The guidelines explicitly state that the inventiveness of a CRI is determined in a manner that is consistent with the determination of inventiveness of inventions related to other technological fields. The guidelines, also list out the steps required to be followed in order to determine the inventiveness of CRIs:

• Identifying the inventive concept embodied in the patent application;
• Imputing to a normally skilled but unimaginative addressee, what was common general knowledge in the art at the priority date of the patent application;
• Identifying the differences, if any, between the matter cited and the alleged invention; and
• Deciding, whether those differences, viewed without any knowledge of the alleged invention, constituted steps which would have been obvious to the person reasonably skilled in the art or whether they required any degree of invention.

The determination of industrial applicability in the case of CRIs is deemed crucial since the inventions relating to these categories are, at times considered abstract theories, lacking in industrial application.

Determination Of Excluded Subject Matter Relating To CRIs

The guidelines suggest that it is comparatively simple to ascertain the patentability of inventions having apparatus/system claims having hardware implementations, the scrutiny of process/method claims contained in an invention are tricky since most of them are no longer limited to ‘manner of manufacture’. The guidelines assert that a process/method claim can be construed as being patentable if the relationship between the claimed process/method and a technological field can be mapped.

The determination of inventive step involves assessment of whether a feature involves a technical advantage over the existing prior art or not. The guidelines provide certain general examples that can be conceived astechnical effects:

• Higher speed
• Reduced hard-disk access time
• More economical use of memory
• More efficient data base search strategy
• More effective data compression techniques
• Improved user interface
• Better control of robotic arm
• Improved reception/transmission of a radio signal

The guidelines also define technical advantage as a contribution to the existing state of the art, in any field of technology. While addressing the issue of inventive step, there is a need to differentiate between the softwares having technical advancements from the ones that do not. While it is pertinent to note that technical advancement comes with technical effect, a technical effect may not necessarily involve a technical advancement.

Further, the guidelines emphasize on other subject matter held non-patentable (excluded subject matter) that include:

1. A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions:

Writings, music, works of fine arts, paintings, sculptures, computer programmes, electronic databases, books, pamphlets, lectures, addresses, sermons, dramatic-musical works, choreographic works, cinematographic works, drawings, architecture drawings, engravings, lithography, photographic works, applied art, illustrations, maps, plans, sketches, three dimensional works relating to geography, topography, translations, adaptations, arrangements of music, multimedia productions, etc. are not patentable. Such works fall within the domain of the Copyright Act.

2. A mere scheme or rule or method of performing a mental act or method of playing game:

A mere scheme or rule or method of performing mental act(s) or a method of playing game(s) are excluded from patentability, because they are considered as outcome of mere mental process. For example,

• Method of playing chess
• Method of teaching
• Method of learning
• Method of training

3.Presentation of information:

Any manner or method of expressing information, whether visual, audible or tangible; by words, codes, signals, symbols, diagrams or any other mode of representation, is not patentable. For example, a speech instruction in the form of printed text where horizontal underlining indicates stress and vertical separating lines dividing the works into rhythmic groups is not patentable. For instance, railway timetable, 100 years calendar etc.

Conclusion

The following inferences can be drawn from a detailed analysis of the Guidelines pertaining to the Examination of CRIs:

• Mathematical methods, business methods, algorithms, presentation of information, mental acts and methods of playing games are absolutely barred by direct application of statute, no matter in which form they are claimed, if they fall in one of these categories.
• Computer related inventions involving novel hardware are patentable in a system claim format.
• Computer related inventions involving a novel process are patentable in a method claim format when tied to a particular machine or device other than a general-purpose computer.
• Computer related inventions involving a novel process are patentable as a system in a ‘means plus function’ claim format, provided “structural features” of the “means” that accomplish a particular method step in the claim are defined in the specification.
• Claims of a patent application may include hardware features such as ‘a processor’, etc., in a method claim, but the patentability of the method claims will be judged based on the substance of the claim and not its form.

The Indian Patent Office begins the examination of a CRI by determining the technical filed of the invention followed by the determination of the technical contribution of the CRI to the prior art. The Patent Office also ascertains whether the claims of the CRI fall within the ambit of Section 3, especially Section 3(k) of the Indian Patents Act, 1970.

During the process of examination, the Patent Office further separates the ‘technical features’ and ‘non-technical features’ claimed in the claims related to a CRI, and subsequently analyzes the technical features of the claims and the technical problems the claims purport to solve. Therefore, it is necessary to emphasize on the technical features and the technical problem that is intended to be addressed by the claimed computer related invention.

The guidelines have certainly brought in clarity in a growing field of inventions and will assist only the examiners, but specification drafters and inventors in framing their specifications in an acceptable manner.