In this article, Utkarsh Sharma of RGNUL discusses Guidelines for Computer-Related Inventions in India.

The Guideline for the Examination of Computer-Related Inventions has been issued by the Office of the Controller General of Patents, Designs, and Trademarks. For many years, the regime of Computer-Related Inventions in India has remained unclear, as Section. 3(k) of the Patents Act 1970, excludes the patentability of computer programmes per se. But with the introduction of these guidelines, manufacturing, and investment have now become new buzzwords in the Indian business vocabulary. The initiatives of government such as Digital India and Make in India campaigns have also contributed in a great way. These campaigns worked for creating a welcoming environment for foreign corporations seeking to invest and manufacture in India. These foreign players generally remain concerned about the IP rights protection in India.

What are Computer-Related Inventions (CRIs)?

In the recent years, the Office of the Controller General of Patents, Designs, and Trademarks has issued multiple sets of guidelines interpreting the scope of computer-related inventions and their protection in India.

As per the Guidelines for Examination of Computer-Related Inventions by the office of the Controller General of Patents, Designs, and Trademarks, the computer Related Inventions are defined as those that involve:

• The use of computers
• Computer networks
• Other programmable apparatus.
• Inventions with one or more features that are realized wholly or partially by means of a computer programme.

Legal Nature of the Document

These guidelines by the office of the Controller General of Patents, Designs, and Trademarks do not constitute any rulemaking. In case if there is any conflict between the provisions of the Patents Act, 1970 or the Rules made thereunder and guidelines, the said provisions of the Act and Rules will prevail over these guidelines. These guidelines are subject to revision from time to time based on interpretations by Courts of law, statutory amendments and valuable inputs from the stakeholders. The merits of such guidelines being binding on the patent applicants are questionable since they neither supersede the Act nor the precedents. However, one can argue that these guidelines may be binding on the patent examiners. Nevertheless, these guidelines have significant practical implications. The examiners of the patents are expected to follow these guidelines while examining CRI. Therefore, they are rational while issuing examination reports, granting or rejecting patents to CRI will likely be in line with these guidelines. These guidelines act as an indirect reflection of the government’s stand on the patentability of the CRIs.

What are the requirements to determine the patentability of CRIs?

In order to make the computer-related invention patentable, one needs to understand various requirements, which are needed to be followed:

• Novelty – It is understood from the meaning of the word novelty, which means, the quality of being new, original, or unusual. It is the foremost requirement to determine the patentability of any invention. The criterion to judge the novelty can be understood from various provisions of:    
  1. Indian Patents Act, 1970
  2. Chapter 08.03.02 of the Patent Manual, 2008.
• Inventive Step – In accordance with the provisions of section 2(1)(ja) of The Patents Act, 1970,  “inventive step” means 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.

Supreme Court of India on inventive step:

Hon’ble Supreme Court in Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries Ltd (AIR 1982 SC 1444), the following points need to be objectively judged to ascertain, looking at the invention as a whole, whether the invention does have an inventive step or not:

1. Identify the “person skilled in the art”, i.e competent craftsman or engineer as distinguished from a mere artisan.
2. Identify the relevant common general knowledge of that person at the priority date.
3. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it.
4. Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed.

• Industrial Applicability – Industrial Applicability has been defined in section 2(1)(ac) of Indian Patents Act, 1970 as “capable of industrial application”, in relation to an invention, means that the invention is capable of being made or used in an industry. The invention is required to be of industrial applicability or industrial application. It should have workability and usefulness in the industrial application to be eligible for the patent.
• Sufficiency of Disclosure – The requirement of “What” (is the invention) and “How” (to perform it) must be satisfied. The complete disclosure of invention must be made to meet the requirements of Indian Patent Act, 1960. The description made must be unambiguous, clear, correct and accurate.

Things to be kept in mind while making a Claim

• The claims should clearly define the scope of the invention.
• The specification should be clear and succinct and the claim should be fairly based on the matter disclosed in the specification.
• The claim should be explained such that, to ascertain the substance of the claim without wholly relying on the forms and types of the claims.

What all is not patentable?

According to the guidelines issued by the office of the Controller General of Patents, Designs, and Trademarks, below mentioned are excluded from patentability under Computer-Related Inventions (CRIs):

• A mathematical or business method or a computer programme per se or algorithms.
• A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions.
• A mere scheme or rule or method of performing mental act or method of playing a game.
• A presentation of information.
• The topography of integrated circuits.

How to determine the excluded subject matters relating to CRIs

The below mentioned are excluded from patentability and if one’s claim falls in any of the below-mentioned categories, it will not be patentable.

• Claims directed as “Mathematical Method”
  • Mathematical methods, like a method of calculation, formulation of equations, finding roots of numbers and all other similar acts of mental skill are, not patentable.
  • Mere manipulations of an abstract idea or solving purely mathematical problem/equations without specifying a practical application also attract the exclusion under this category.
  • Below mentioned does not come under exclusion:
    i. Encoding
    ii. Reducing noise in communications/electrical/electronic systems
    iii. Encrypting/ Decrypting electronic
• Claims directed as “Business Method”
  • The claims drafted not directly as “business methods” but apparently with some unspecified means are held non-patentable.
  • If the claimed subject matter specifies an apparatus and/or a technical process for carrying out the invention(even partly), the claims shall be examined as a whole.
  • When a claim is “business methods” in substance, it is not to be considered a patentable subject matter.
  • Mere presence of words like, “enterprise”, “business”, “business rules”, “supply chain”, “order”, “sales”, “transactions”, “commerce”, “payment”, etc. in the claims may not lead to conclusion of an invention being just a “Business Method”.
  • If the subject matter is essentially about carrying out business/ trade/ financial activity/ transaction and/or a method of buying/selling goods through the web (e.g. providing web service functionality), the same should be treated as a business method and shall not be patentable.
• Claims directed as “Algorithm”
  • A set of rules or procedures or any sequence of steps
  • Any method expressed by way of a finite list of defined instructions, whether for solving a problem, And
  • Whether employing a logical, arithmetical or computational method, recursive or otherwise, are excluded from patentability.
• Claims directed as “Computer Programme per se”

Claims directed at are not patentable.

• • Computer programmes
  • Set of instructions
  • Routines and subroutines.
  • Computer programme products
  • Storage Medium having instructions
  • Database
  • Computer Memory with the instruction stored in a computer-readable medium.

• A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions.
  • As per the procedures laid out in chapter 08.03.05.11 of the Patent Manual.
    
• A mere scheme or rule or method of performing mental act(s) or a method of playing game(s)
• • As per the procedures laid out in chapter 08.03.05.12 of the Patent Manual.
• Presentation of information
• • As per the procedures laid out in chapter 08.03.05.13 of the Patent Manual.
• Topography of integrated circuits
• • As per the procedures laid out in chapter 08.03.05.14 of the Patent Manual.

The benefits of patent protection

• Ensures the inventors to get a reasonable return on their commercially successful innovations.
• Make easier to establish fruitful business collaborations for innovation-based startups and small businesses.
• Helps in promoting the knowledge sharing through patent disclosure, itself an important driver of innovation.
• It also helps in attracting investment partners and supports business expansion.

References:

1. http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/Revised__Guidelines_for_Examination_of_Computer-related_Inventions_CRI__.pdf.
2. http://www.mondaq.com/india/x/615532/Patent/Revised+Guidelines+for+Examination+of+Computerrelated+Inventions+CRIs.
3. https://www.lakshmisri.com/News-and-Publications/Publications/Articles/IPR/guidelines-for-patentability-of-computer-related-inventions-is-this-the-final-chapter.
4. https://www.lexology.com/library/detail.aspx?g=3b6560ab-9e0f-45c7-b18a-6fff7d359324.