Summary
The Indian Patent Office has issued new Guidelines for examining Computer Related Inventions, replacing the previous provisions in the MPPP related to section 3k of the Patents Act, 1970. The Guidelines clarify what constitutes patentable subject matter and introduce definitions for previously undefined terms relevant to computer related inventions. They provide practical examples to illustrate what types of claims are considered patentable and which are not. The stance on software patents remains cautious but is now more nuanced, considering (novel) software tied to (novel) hardware and software impacting hardware performance. These changes offer greater clarity to applicants drafting CRI patent applications.
Overview
The Indian Patent Office, following an extensive consultative process, issued an Order replacing Chapter 08.03.05.10 of the Manual of Patent Office Practice and Procedure (MPPP), which contained provisions pertaining to section 3(k) of the Patents Act, 1970. The chapter was replaced by the provisions of the new Guidelines for examination of Computer Related Inventions (CRIs), which took effect immediately upon their publication.
Scope of the Guidelines
The Guidelines outline the legal provisions relating to CRIs and explain in detail what constitutes patentable subject matter and the parameters applied by the Office to determine whether a claimed invention qualifies as such. Several terms that had not previously been defined in the Manual or in the Act or Rules are given definitions, which may be used for reference when drafting applications pertaining to Computer Related Inventions. The Guidelines also illustrate, through examples, the types of claims that are considered patentable and those that are not.
Relevant Statutory Provision
Section 3(k) of the Patents Act, 1970 provides that the following are not inventions within the meaning of the Act:
…a mathematical or business method or a computer programme per se or algorithms;
Effect of the Guidelines
The Guidelines reflect a measured relaxation of the Indian Patent Office’s approach to software-related patent applications. The patentability of an invention is now assessed by considering the invention as a whole. Software per se remains non-patentable under section 3(k). However, novel hardware, novel software tied to novel hardware, and novel software with known hardware where the software affects the functions or performance of that known hardware are given a more comprehensive examination. This represents a departure from the position taken in the superseded chapter of the MPPP.
Disclaimer
This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.