By Kshitij Malhotra, Partner and Garima Rai, Senior Associate

On 30th June 2017, the Indian Patent Office introduced a fresh set of CRI Guidelines[i] for examination of Computer Related Inventions (CRI). Notably, this is the third set of guidelines issued by the Indian Patent Office in last three years. The previous two versions were introduced on 21st August 2015 and 19th February 2016 respectively. In the newly introduced guidelines, IPO has introduced changes in comparison to the earlier versions for examination of computer related inventions.

Determination of excluded Subject Matter:

It has been a matter of debate for patentability of Computer Related inventions in India. The issue of patentability arises when an invention involves computer software. In their previous guidelines of Feb, 2016, the Patent Office had mandated the presence of novel hardware to claim protection for the computer software involved therein. This was a complete reversal of guidelines of Aug 2015 in which the Patent Office has suggested that computer programs are patent allowable subject matter, and the allowability of a particular software program would depend on whether there is any technical effect of the software program claimed.

In the new guidelines, the requirement of novel hardware has been eliminated from the patentability requirements. In the new guidelines, although it is clearly mentioned that the Section 3(k)[ii] excludes mathematical methods or business methods or computer programme per se or algorithms from patentability, the patent office has emphasized that invention should be examined and judged to its entirety or as a whole.

Emphasis has been added to the underlying substance of the invention and not in the manner of its presentation. The guidelines also specifically describe the various possible ways of presentation of computer related inventions such as method/process, apparatus/system/device, computer program product/ computer readable medium. The technical advancement over the existing prior arts must be judged keeping the claimed invention as a whole and not into its way of presentation.

Accordingly, these guidelines are little closer to the Aug 2015 guidelines than the Feb 2016 guidelines. Unlike the Aug 2015 guidelines, the new guidelines are bereft of any examples or any concrete criteria on evaluation of patentability of software patents.

The present guidelines should prove to be beneficial and hopeful for applicants with inventions falling in the vicinity of computer related inventions. However, the biggest disappointment from these guidelines is the absence of any case examples or listing on specific criteria to judge whether the invention’s subject matter is patent allowable? The absence of specific criteria would encourage disagreement between the Patent Office and patent applicant. More likely, it will result in higher discretion on part of the Patent Office, which could be unhealthy for the intellectual property rights ecosystem.

Section 3: What are not inventions. -The following are not inventions within the meaning of this Act,- (k) a mathematical or business me

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