Centre for Internet & Society

By discarding a test brought into force last year, the updated Guidelines take no concrete position to help clarify the ambiguity around patentability of software inventions in India.

The Office of the Controller General of Patents, Designs and Trademarks (CGPDTM) issued new Guidelines on Examination of Computer Related Inventions (CRIs) on 30th June, making it easier to obtain a software patent in India (as compared to standards set in the 2016 Guidelines).

New Changes

The most important change is removal of a test notified in 2016 which made CRIs patent eligible provided there was a novel hardware component in the patent application. Accordingly, references in the guidelines which aided interpretation of the 2016 test have been deleted. Additionally, the new guidelines exclude the layout of integrated circuits as patentable subject matter in CRIs.

The CGPDTM has refrained from prescribing a new test to determine patentability of CRIs.

In the absence of specific guidance, it is likely that examiners will heavily rely on section 3(k) of the Patents Act, 1970, the Manual of Patent Practice and Procedure, and the views expressed by the Joint Parliamentary Committee in respect of "per se":

"In the new proposed clause (k) the words ''per se" have been inserted. This change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon. The intention here is not to reject them for grant of patent if they are inventions. However, the computer programmes as such are not intended to be granted patent. This amendment has been proposed to clarify the purpose."

Policymaking re Guidelines on Examination of CRIs

After years of deliberation, the Indian Patent Office first proposed a test in 2015 which was met with disapproval as it lowered the bar for patentability of CRIs. After a stakeholder consultation, the IPO revised the test in 2016, raising the bar of patent eligibility of CRIs, which was favorable to the growth of small and medium enterprises in the Indian IT industry. The present 2017 guidelines are a result of streamlining stakeholder consultations conducted in response to the 2016 guidelines as per a circular by the IPO.

In the following table, I list the substantive changes made in the new guidelines (in comparison to the 2016 Guidelines) and make some preliminary remarks:

Type of Change Change Remarks
Inserted in 2.1, Legal Provisions relating to CRIs and Deleted in 4.1, Novelty Section 2 (1)(l) defines “new invention” in The Indian Patents Act, 1970 as follows: "New invention" means any invention or technology which has not been anticipated by publication in any document or used in the country  or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art

Added in 2.2, List of explicit exclusions from patentability under section 3 for CRIs
Section 3(o) topography of integrated circuits Contemplates layout of integrated circuits as subject matter relating to CRIs
Parts deleted in 4.3, Industrial Applicability

Industry herein is to be understood broadly having any useful and practical activity while excluding intellectual or aesthetic activity.    Claims relating to “Method of playing games” and “computer programming languages” are not considered to be industrially applicable. A method for effecting introductions with a view to making friends is not industrially applicable even though it could be carried out by a commercial enterprise.   The determination of industrial applicability in case of CRIs is very crucial since applications relating to CRIs may contain only abstract theories, lacking in industrial application.
Only an explanation of industrial applicability in the general context of patent law remains.
Deleted in 4.4, Sufficiency of Disclosure (strikethrough indicates deleted part)

4.4.1 Fully and particularly (What): 1.  If the patent application relates to apparatus/system/device i.e hardware based inventions, each and every feature of the invention shall be described with suitable illustrative drawings. If these system/device/apparatus claims are worded in such a way that they merely and only comprise of a memory which stores instructions to execute the previously claimed method and a processor to execute these instructions, then this set of claims claiming a system/device /apparatus may be deemed as conventional and may not fulfil the eligibility criteria of patentability.    If, however, the invention relates to ‘method’, the necessary sequence of steps should clearly be described so as to distinguish the invention from the prior art with the help of the flowcharts and other information required to perform the invention together with their modes/means of implementation. […]
Loosened the disclosure requirement
Deleted in 4.4, Sufficiency of Disclosure (strikethrough indicates deleted part)
4.4.4  Form and substance: […] Even when the issue is related to hardware/software relation, (e.g., when the claims recite ‘processor is programmed to… or ‘apparatus comprising a processor and configured / programmed to…..) the expression of the functionality as a ‘method’, is judged on its substance.  It is well established that, in patentability cases, the focus should be on the underlying substance of the invention, not the particular form in which it is claimed. The Patents Act clearly excludes computer programmes per se and the exclusion should not be allowed to be avoided merely by camouflaging the substance of the claim by wording (e.g. different subroutines are performed in different physical locations such as processors will not suffice).
Removed illustrations
Replaced in 4.4, Sufficiency of Disclosure (strikethrough indicates deleted part)

4.4.5 Means Plus Function:

Further, if the specification supports implementation of the invention solely by the computer program then in that case means plus function claims shall be rejected as these means are nothing but computer programme per se.

Where no structural features of those means are disclosed in the specification and specification supports implementation of the invention solely by the software then in that case means in the “means plus function” claims are nothing but software.

 Replaced both struck out words by performing the invention

Added in 4.5, Determination of excluded subject matter relating to CRIs

[…] Hence, along with determining the merit of invention as envisaged under Sections 2(1) (j), (ja) and (ac), the examiner should also determine whether or not they are patentable inventions under Section 3 of the Act.

Parts deleted in 4.5.1. Claims directed as “Mathematical Method”:

[…] Some examples which will attract exclusion:     acts of mental skill. e.g. A method of calculation, formulation of equations, finding square roots, cube roots and all other methods directly involving mathematical methods like solving advanced equations of mathematics.    merely manipulates abstract idea or solves a purely mathematical problem without specifying a practical application.

Added in in 4.5.1. Claims directed as “Mathematical Method” (emphasis supplied)

4.5.1. Claims directed as “Mathematical Method”: Mathematical methods are a particular example of the principle that purely abstract or intellectual methods are not patentable. Mathematical methods like method of calculation, formulation of equations, finding square roots, cube roots and all other similar acts of mental skill are therefore, not patentable. Similarly mere manipulations of abstract idea or solving purely mathematical problem/equations without specifying a practical application also attract the exclusion under this category.   However, mere presence of a mathematical formula in a claim, to clearly specify the scope of protection being sought in an invention, may not necessarily render it to be a “mathematical method” claim. Also, such exclusions may not apply to inventions that include mathematical formulae and resulting in systems for encoding, reducing noise in communications/ electrical/electronic systems or encrypting/ decrypting electronic communications.
Illustrations added to show that CRIs that include mathematical formulae and result in systems for encoding, reducing noise in communications/ electrical/electronic systems or encrypting/ decrypting electronic communications, will not be ineligible merely by virtue of presence of mathematical formulae. They will not necessarily construe a claim on mathematical method.

Part deleted in 4.5.4, Claims directed as “Computer Programme per se”
The computer programme per se is excluded from patentability under section 3(k) apart from mathematical or business method and algorithm

Inserted in 4.5, Determination of excluded subject matter relating to CRIs (emphasis supplied)
4.5.8. Topography of integrated circuits   The above criterion is to be judged as per the procedures as laid out in chapter of the Manual Contemplates layout of integrated circuits as subject matter relating to CRIs
Parts deleted in 5, Tests/Indicators to determine Patentability of CRIs

5.   Tests/Indicators to determine Patentability of CRIs:    Examiners may rely on the following three stage test in examining CRI applications:   (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.
Implication is that this test is no longer in force for examination of patentability of CRIs

Deleted 6, Illustrative examples of Claims which are not patentable
Refer to 2016 Guidelines

 Note: This post has been updated to reflect the change in point 4.4.5, which was previously missed by the author.

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