New CRI Guidelines Introduced
The patentability requirements and examination criteria for computer related inventions has been under scrutiny in major jurisdictions of the world. Considering the special nature of this ever evolving field there have been discussions and changes as well as interpretations of legislation on how best to protect this fast-paced innovation where each invention has a short life. The advent of AI, big data and internet of things has further brought new challenges into the forefront requiring clarity of how to apply the law and protection mechanisms to inventions in these high tech fields. The latest guidelines released by the IPO are a forward and welcome step in this direction.
Initiatives by the IPO
In India specifically, there has been increasing interest in both software products and services. There has been growth in the industry as well as the market for ICT products. The Indian ICT sector has several Indian as well as MNC R&D Innovation centres and is a hot bed of innovations. Consequently, this has led to an increase in patent filings and has resulted in initiatives by the IPO in the form of examination guidelines for CRI. In the past few years these have gone through a lot of changes.
The guidance for examining software related inventions were first introduced in the ‘Manual for Patent Practice and Procedure’ in 2005. It underwent several changes in different versions of this manual released thereafter in 2008, 2010 and 2011. In 2013, a separate draft set of guidelines apart from the manual was released dedicated only to the examination of computer related inventions. These were revised in 2015, but were soon put in abeyance with a new set replacing them in early 2016. However these seem to have been released under pressure since the SFLC had written a letter directly to the PMO complaining about the “unfair” protection offered under the 2015 guidelines. These guidelines could not hold water since they were against the legislative intent and had been formed without giving much thought. Since then, after extensive deliberations and several stakeholder meetings, the latest guidelines have recently been released on 30th June 2017 .
The guidelines of 2016 had placed the presence of “novel hardware” as a patentability requirement for software related inventions. One of the major changes brought about in the latest version is that this requirement has been removed as it was clearly against the intention of the legislature. Apart from that all examples of non-patentable inventions which were earlier given have been removed. It has also been clarified that systems for encoding, reducing noise in communications/ electrical/electronic systems or encrypting/ decrypting electronic communications shall not be regarded as mathematical methods and shall be considered patentable
What Remains the Same
As before, the guidelines focus on the substance of the claims over the form in which they have been worded. They also direct that for means + function claims, the means are to be defined with physical constructional features along with reference numerals to enhance the intelligibility of the claims. The structural features of those means are also to be disclosed in the specification. Guidelines for algorithms and business methods are also retained as is
Scope for More
However, technical effect and technical advancement have not been defined and neither have these terms explicitly been mentioned as patentability criteria. Suitable examples would have also been beneficial to aid understanding and clearly differentiate between what is patentable and what is not