Patent

IPO Issues Updated Guidelines for Computer Related Inventions


IP Office - CRI guidelinesLast week was a busy week at our patent office!! The Controller General issued clarifications under the Designs Act / Rules, and these examination guidelines under the Patent Act / Rules.  I will not do an analysis of the guidelines but simply extract out some relevant parts for our readers.  For more our readers can refer to our previous posts on Section 3(k) here, here, here, here, and here, and others.  These guidelines are extremely detailed and would definitely be helpful to practitioners, and patentees.

4.5. Determination of excluded subject matter relating to CRIs
Since patents are granted to inventions, whether products or processes, in all fields of technology, it is important to ascertain from the nature of the claimed CRI whether it is of a technical nature involving technical advancement as compared to the existing knowledge or having economic significance and is not subject to exclusion under Section 3 of the Patents Act.
The sub-section 3(k) excludes mathematical methods or business methods or computer programme per se or algorithms from patentability. Computer programmes are often claimed in the form of algorithms as method claims or system claims with some „means‟ indicating the functions of flow charts or process steps. 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.
What is important is to judge the substance of claims taking whole of the claim together. If the claims in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium fall under the said excluded categories, they would not be patentable. However, if in substance, the claims, taken as whole, do not fall in any of the excluded category, the patent should not be denied.

Claims directed at “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 methods directly involving mathematical methods are therefore not patentable. With the development in computer technology, mathematical methods are used for writing algorithms and computer programs for different applications and the invention is claimed as one relating to the technological development rather than the mathematical method itself. However, mere use of a mathematical formula in a claim, to clearly specify the scope of protection being sought, would not necessarily render the claim to be mathematical method.
Some examples which may not fall under category of “mathematical method” exclusion:
Any computing/calculating machine constructed to carry out a method Method of encoding/decoding, method of encrypting/decrypting, method of simulation though employing mathematical formulae for their operations may not fall under these exclusions

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.

4.5.2 Claims directed at “Business Method”:

The term „Business Methods‟ involves whole gamut of activities in a commercial or industrial enterprise relating to transaction of goods or services. The claims drafted not directly as “business methods” but apparently with some unspecified means are held un-patentable. However, 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. Only when in substance the claims relate to “business methods”, they are not considered to be a
patentable subject matter.
However, mere usage of the words such as “enterprise”, “business”, “business rules”, “supply-chain”, “order”, “sales”, “transactions”, “commerce”, “payment” etc. in the claims should not lead to conclusion of a Computer Related Invention being just a “Business Method”, but if the subject matter is essentially about carrying out business/ trade/ financial
transaction and/or a method of selling goods through web (e.g. providing web service functionality), should be treated as business method.
4.5.3 Claims directed at “Algorithm”:

Algorithms in all forms including but not limited to, a set of rules or procedures or any sequence of steps or any method expressed by way of a finite list of defined instructions, whether for solving a problem or otherwise, and whether employing a logical, arithmetical or computational method, recursive or otherwise, are excluded from patentability.

4.5.4 Claims directed at 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. Claims which are directed towards computer programs per se are excluded from patentability, like (i) Claims directed at computer programmes/ set of instructions/ Routines and/or Sub-routines written in a specific language

(ii) Claims directed at “computer programme products” / “Storage Medium having instructions” / “Database” / “Computer Memory with instruction” i.e. computer programmes per se stored in a computer readable medium The legislative intent to attach suffix per se to computer programme is evident by the following view expressed by the Joint Parliamentary
Committee while introducing Patents (Amendments) Act, 2002:

“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.”

The JPC report holds that the computer programmes as such are not intended to be granted patent. It uses the phrase “ … certain other things, ancillary thereto or developed thereon…..”. The term “ancillary” indicates something essential to give effect to the main subject. In respect of CRIs, the term “ancillary thereto” would mean the “things” which are essential to give effect to the computer programme. The clause “developed thereon” in the JPC report may be understood as any improvement or technical advancement achieved by such development. Therefore, if a computer programme is not claimed by “in itself” rather, it has been claimed in such manner so as to establish industrial applicability of the invention and fulfills all other criterion of patentability, the patent should not be denied. In such a scenario, the claims in question shall have to be considered taking in to account whole of the claims.

 

Rajiv Kr. Choudhry

Rajiv Kr. Choudhry

Rajiv did his engineering from Nagpur University in 2000 in electronics design technology. He has completed his LL.B. from Delhi University, Law Center II in 2006, while working as an engineer at ST Microelectronics in NOIDA. After his LL.B., he went on to The George Washington Univeristy, Washington DC to do his LL.M. in 2007. After his LL.M., he has worked in the US at a prestigious IP law firm based out of Philadelphia. Till 2014, he was Of-Counsel to a Noida based IP law firm where he specialized in advising clients on wireless, telecommunication, and high technology. Rajiv is the founder of Tech Law Associates, a New Delhi based law firm specializing in IP law, with a focus on high - technology, and patent law. His core IP interest areas are the intersection of technology and IP, Indian IP policy, innovation, and telecommunications patents. He is also an inventor with pending applications in machine-to-machine communications domain (WO2015029061).

4 comments.

  1. AvatarKshitij Malhotra

    Rajiv: Do you think example 8.4 is a patent eligible subject matters based on the guidelines provided by IPO?

    Reply
    1. AvatarRajiv

      I see the concern Kshitij. Technically, till the act is amended no method claim can past muster – it is covered under algorithm – and method claim itself is directed to an algorithm. As regards the example 8.4 – it is more of a sorting and matching algorithm and identifying a next set of names.
      Just my personal opinion. Not legal advise.

      Reply
  2. AvatarDeepak Mehra

    Hello Kshitij

    My understanding is – since example 8.4 does not fall straight into business method or mathematical method category, it should be a patentable matter, unless one proves that it is NOT of a technical nature involving technical
    advancement as compared to the existing knowledge or NOT having economic
    significance.

    I think the more direct answer is – the Indian Patent Office now seems to have changed course almost 180 degrees and the default in case of doubt is – patentable!

    regards
    Deepak Mehra
    VIDURNEETI

    Reply
  3. AvatarKshitij Malhotra

    Hello Deepak:

    I agree with you. I somehow believe, the guidelines imply an easier course of prosecution for software patent filers in India. There are many cues which can now be relied on while arguing grant of software patents at IPO.

    I am unsure but seems like this is part of policy change at the patent office, so that it could be seen as a patent friendly patent office at least in some technology domain, especially after all the section 3 (d) debates and in light of the drop in patent filings in recent years.

    Kshitij Malhotra

    Reply

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