On the 21st of August, 2015 the Office of the Controller General of Patents, Designs and Trademarks issued “Guidelines for Examination of Computer Related Inventions (CRIs)”. A month later, some of the most well noted Institutions, Organizations and Individuals expressed their concerns over the issued guidelines for Examination of Computer Related Inventions, in a joint letter to the PMO. The post from Sinapse that covered this news is available here.
Later in December 2015, the guidelines were kept in abeyance until discussions with stakeholders could be completed and contentious issues resolved. Now, on 19th February, 2016, the Office of the Controller General of Patents, Designs and Trademarks has once again issued a fresh set of “Guidelines for Examination of Computer Related Inventions (CRIs)”.
However, doing a volte-face from the August 2015 version which allowed patenting of such software that demonstrated technical advancement, the new guidelines hold that Mere computer programmes – those that are not in conjunction with a novel hardware, will not be granted patent in India.
The introductory text of the guidelines identifies that the objective of this document is to bring out clarity in terms of exclusions expected under section 3(k) so that eligible applications of patents relating to CRIs can be examined speedily. Section 3(k) regards “a mathematical or business method or a computer programe per se or algorithms” to be Inventions Not Patentable under the Patents Act, 1970.
The guidelines suggest the patent examiners to rely on a three stage test in examining CRI patent applications. The Test/Indicators to determine Patentability of CRIs as mentioned in the guidelines are listed below. These are:
(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 guidelines also indicate that while the judgment of mathematical methods or business methods is comparatively easier, it is the computer programme per se or algorithms related inventions that require careful consideration of the examiner.
The guidelines do clarify and re-emphasize some important points pertaining to CRIs. For instance, the document re-emphasizes the legislative intent to attach suffix per se to computer programme considering the fact that “sometimes the computer programme may include certain other things, ancillary thereto or developed thereon.”
These guidelines are good news for start-ups and software developers who will continue to have the freedom to innovate without having to worry about infringement and other litigation disputes.
The 2015 guidelines sought to subvert three of the four items that have been held to be not patentable under Section 3(k) of the Patents Act. One is software per se, the second is a mathematical method and the third is a business method. This was met with stiff opposition from various stakeholders. As we already identified in an earlier post on the issue, the US guidelines on software patents had resulted in a state of mayhem until the unstable interpretation of the law was reversed by the US Supreme Court. Luckily for India, the state of affairs in software patenting has been stabilized with the issue of the present guidelines.
Stay synced with Sinapse as a detailed analysis of the guidelines supplemented with our views and thoughts on the same will be published shortly.
Authored by Gaurav Mishra.
Contributed with the support of the Patents Division of BananaIP Counsels. For any patent related queries, please write to us at [email protected]. Our experts will revert at the earliest.