The guidelines for examination of Computer Related Inventions (CRI) published by the Indian Patent Office last year were kept in abeyance by the new Controller General in December 2015.
After a stakeholder’s meeting on January 19, 2016, the new CRI guidelines were published on February 19, 2016.
The examination procedure of patent applications relating to CRIs remains the same as for other inventions to the extent of consideration of novelty, inventive step, industrial applicability and sufficiency of disclosure etc. The crux of the guidelines is as follows:
- The guidelines describe the test to ascertain novelty and inventive step which is not limited to the examination of CRI alone but extends to all fields of technology. This has been covered by the search and examination guidelines.
- The guidelines caution the use of mean cum function format in the claims. The ‘means’ mentioned in the claims shall clearly be defined with the help of physical constructional features and their reference numerals to enhance the intelligibility of the claims. The claims in means plus function form shall not be allowed if the structural features of those means are not disclosed in the specification. Should the invention be implemented by way of a computer program, such claims shall be rejected.
- The substance of claims taking whole should be ascertained. The claims shall be denied patentability should they be claimed in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium fall under excluded categories. However, should the claims, taken as whole, do not fall in any of the excluded categories in substance, thee same would be allowed.
- A mere presence of a mathematical formula in a claim, to clearly specify the scope of protection being sought in an invention, does not necessarily render it to be a “mathematical method” claim.
- A mere presence of the words such as “enterprise”, “business”, “business rules”, “supply-chain”, “order”, “sales”, “transactions”, “commerce”, “payment” etc. in the claims does not lead to conclusion of an Invention being just a “Business Method”, but if the subject matter is essentially about carrying out business/ trade/ financial activity/ transaction and/or a method of buying/selling goods through web (e.g. providing web service functionality), would be treated as business method and will not be patentable.
- Algorithms in all forms are excluded from patentability.
- Computer programme per se are excluded from patentability. The guidelines have narrowed down the patentability in this aspect to checking whether the computer programme is claimed in conjunction with a novel hardware. The computer programme in itself is not patentable. If the contribution lies solely in the computer programme, it will not be allowed. It is pertinent to note here that the guidelines are silent on technical effect and technical contribution in this regard.
- The guidelines cites examples of exclusions.
Should you wish to obtain an opinion on these guidelines and the impact that this would have on CRI, please contact us.