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“Is software patenting allowed in India at all? How can we protect computer related inventions via patents?”
This is a most common question which companies & individuals working in the IT & ITES sector have as the Indian patent act clearly states that algorithms or computer program are not patentable “per se”.
Only recently the Patent Office India published revised guidelines for examination of Computer Related Inventions (CRIs). Before I take you to the guidelines though, let me establish a baseline of knowledge for the IPR un-initiated readers.
As per the Patent laws in India – The Patent (Amendments) Act 2002, – provides following inventions as excluded matter for patenting under section 3:
- 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 game;
- a presentation of information;
- topography of integrated circuits;
Like all other inventions, the CRI inventions will also be examined with respect to novelty, inventive step, industrial applicability & sufficiency of disclosure. However, the CRI inventions would be further examined from the nature of invention whether-
- it is of a technical nature with technical advancement w.r.t existing knowledge OR
- having economic significance over the existing knowledge & solutions or both &
- it is not subject to exclusion under section 3k of The Patent Act.
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Here are few salient points of the revised guidelines, worth taking a note of:
- Criteria for patentability:
While the basis for judging the invention’s novelty, inventive step & industrial use along with sufficiency of disclosure is same as that for inventions belonging to other domains, the examiners will provide special attention to ascertain that the invention is not essentially a computer program or algorithm per se in form & substance.
- Substance & Form:
In is further well established that the focus should be on the underlying substance of the invention & not the form in which it is claimed. What is important is to judge the substance of claims taking whole of the claim together. If any claim in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium falls under the said excluded categories, such a claim would not be patentable. However, if in substance, the claim, taken as whole, does not fall in any of the excluded categories, the patent should not be denied.
- More clarification on section 3k:
The guidelines make some facets clear with regards to mathematical methods & business method claims-
A. Claims directed as Mathematical methods:
Mathematical methods like mathematical calculation, formulations of equations, or solving purely mathematical problems are not patentable. 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.
B. Claims directed as Business Methods:
“Business Methods‟ include all 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 non-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. When a claim is “business methods” in substance, it is not to be considered a patentable subject matter.
It will be interesting to keep a close watch on the CRI claims which get granted post these guidelines. Only time will tell if the patent office has been able to finally lucidly define the thin line between patentable & non-patentable claims for CRI inventions or has opened the floodgates for more ambiguous interpretations of the law like before.
[Disclaimer: The views expressed on this blog & in my subsequent posts are free expressions of thought & should not be construed as a legal counsel or advice. Reader’s discretion is strictly advised before taking any monetary or other decisions based on the ideas expressed herein. The author will not be held responsible for any actions taken & subsequent consequences based on the content posted herein.]