Patentability Paradox in CRI Guidelines

“The Indian Patent Office issued the latest examination guidelines for computer related inventions (CRI Guidelines)”

The new CRI Guidelines does not concentrate on the impractical “novel” hardware necessity. However, the necessity of some hardware still remains. Illustration , when discussing means plus function claims, the CRI Guidelines state that “the means mentioned in the claims shall clearly be defined with the help of physical constructional features” and “if the specification supports performing the invention solely by the computer programme then in that case means plus function claims shall be rejected as these means are nothing but computer programme per se”. Although this requirement of ‘physical construction features’ could be satisfied by qualifying the claims with language such as “a processor configured to develop”, the notion that the means to achieve a particular function should not be software is a good indication of the position now being adopted by the Indian Patent Office.

“Accordingly, as per the definition adopted by the CRI Guidelines, the exclusion of “computer programme per se” should be interpreted to mean “a set of instructions, which by itself, is capable of causing a computer to perform a particular task”. This is a reasonable definition and arguably most computer related inventions would not claim the invention in words that are by themselves capable of causing a computer to perform a particular task and accordingly would not fall under this exclusion.”

But the CRI Guidelines then state “the Patents Act clearly excludes computer programme per se and the exclusion should not be allowed to be avoided merely by camouflaging the substance of the claims by its wording”.

SEP patent holders, however, may draw some comfort from these CRI Guidelines which state that encoding or reducing noise in communication using mathematical formula may not be considered as excluded subject matter. However, the CRI Guidelines appear to suggest that even for such inventions, it is only the “system claim” that would appear to pass the test of patentability.

The term ‘algorithm’ in the CRI Guidelines, which includes “any sequence of steps”. It is difficult to imagine a method claim that would not be “a sequence of steps” and the guidelines unfortunately offer no guidance or examples of what could possibly escape this exclusion. It seems that this is something the examiners will have to address on a case by case basis.

Since the position of section 3(k) is still not clear , Hopefully in the coming year the position would be much more specific and clear.

L&P Editorial Team

The Law & Practice Blog's editorial team.

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