The Office of Controller General of Patents, Designs and Trademarks on June 30, 2017 notified the new Guidelines relating to examination of Computer Related Inventions (CRIs) in India (“2017 Guidelines“). This post highlights some of the noticeable amendments in the CRI Guidelines, and further presents a prospective response for meeting any FER objection made under Section 3(k) of the Patents Act, 1970.
CRIs comprise of inventions which involve the use of computers, computer networks or other programmable apparatus and include such inventions having one or more features of which are realized wholly or partially by means of a computer programme or programmes.
One significant change which needs to be highlighted at the outset is the removal of requirement for a novel hardware to support a computer programme related invention. The erstwhile 2016 Guidelines required that any computer programme, for being patentable, must be supported by a novel hardware in the specification/claims, thereby making it difficult for applicants without novel hardware to get a patent. However, the 2017 Guidelines have now eased this requirement and the applicant now only needs to show that the claimed invention is of technical nature i.e. it involves technical advancement over the existing art or have economic significance or both. [See para 4.5 of 2017 Guidelines].
Other eventful changes may be accessed from this post.
How to respond to Section 3(k) objections as per the 2017 Guidelines?
Section 3(k) of The Patents Act, 1970 excludes patentability of ‘a mathematical or business method or a computer programme per se or algorithms’.
Computer Programme per se
If the Controller has objected that the claimed invention is non-patentable because it is a computer programme per se. In this regard, the applicant must apprise the Controller of the technical effect of the claimed invention.
Computer programmes are usually claimed using method claims or means plus function claims.
If the claimed invention utilizes method claims, the applicant, in order to bypass Controller’s objection, must apprise him of the underlying substance of the claimed invention. He may further apprise the Controller to look at the underlying substance of the invention and not the particular form in which it is claimed. That is to say, whole of the claims must be seen together while judging the underlying substance of the claimed invention. [See para 4.4.4 and 4.5 of the New Guidelines 2017]
On the other hand, if the claimed invention utilizes means plus function claim, then such means must clearly be defined with the help of physical constructional features and their reference numerals to enhance the intelligibility of the claims. Further, such objection can be traversed by apprising the Controller of the structural features of the means as disclosed in the specification. [See para 4.4.4 of the New Guidelines 2017]
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.
Since computer programmes are generally claimed as algorithms, therefore any objection relating to the claims being directed as algorithms could be met by apprising the Controller of the undderlying substance of the claimed invention.
As per the 2017 Guidelines, mere manipulations of abstract idea or solving purely mathematical problem/equations without specifying a practical application attracts exclusion of patentability.
The applicant may apprise the Controller that the claimed invention does not necessarily involve the use of such mathematical method and any such mathematical formula is merely used in order to clearly specify the scope of protection being sought in the claimed invention.
Additionally, the 2017 Guidelines provide that exclusion from patentability 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. The applicant may apprise the Controller of the same, in case the claimed invention falls within any of these categories. [See para 4.5.1 of the New Guidelines 2017]
If the subject matter is essentially about carrying out business/ trade/ financial activity/ transaction and/or a method of buying/selling goods through web (e.g. providing web service functionality), the same should be treated as business method and shall not be patentable.
According to the 2017 Guidelines the term “Business Methods” involves whole gamut of activities in a commercial or industrial enterprise relating to transaction of goods or services. In order to bypass such objections, erstwhile applicants used to draft the claims relating to business methods with some unspecified means. However, the 2017 Guidelines provide that even if the claims are drafted not directly as “business methods” but apparently with some unspecified means, then such claimed invention would be non-patentable.
In such situation, The applicant may apprise the Controller that mere presence of the words such as “enterprise”, “business”, “business rules”, “supply-chain”, “order”, “sales”, “transactions”, “commerce”, “payment” etc. in the claims should not lead to the conclusion that the claimed invention is a “Business Method”. The applicant may further apprise the Controller of the apparatus, if any, in the claimed invention and/or a technical process for carrying out the invention even partly. In view of such apparatus and/or technical process the applicant may request the Controller to examine the claims as a whole and not to particularly look at the claimed invention as a “business method”.
In addition to the aforesaid, the applicant, while amending the claims to comply with the said objections, must also apprise the Controller of the relevant paragraphs and pages of the complete specification which support such amendments.
Additionally, while amending the claims, it must be kept in mind that the claims should not be blatantly copied from the corresponding foreign applications since Section 3(k) objections are sui generis in India.
While amending claims for meeting Section 3(k) objections precise consideration must be given to the 2017 Guidelines.
*Disclaimer: This article shall not, in anyway, constitute a legal advise.*
The post first appeared on my LinkedIn page here.
Picture from here.