On June 30, 2017, the Indian Patent Office (IPO) released revised Guidelines for Examination of Computer Related Inventions (CRIs) (hereinafter referred to as the 2017 Guidelines) in furtherance to its continuous efforts to provide clarity and maintain homogeneity in the process of examination of patent applications pertaining to CRIs. The 2017 Guidelines can be accessed here.
The first set of guidelines were released in 2015, which were then kept in abeyance (click the link to access the official notice), due to numerous representations received by the IPO by the interested parties. Following this, revised guidelines were released in 2016, which stressed on the requirement of a novel hardware and directed the examiners to deny patents even remotely relating to mathematical methods, business methods and algorithms.
Sigh of Relief; Novel Hardware NOT mandatory:
The 2017 Guidelines, come into immediate effect and supersede the 2016 Guidelines. It is pertinent to note that the 2017 Guidelines are in substance based on the 2016 Guidelines, and reiterate, that while assessing the patentability of CRIs, the focus should be on the underlying substance of the invention and not the particular form in which it is claimed.
However, the revised 2017 Guidelines have done away with the requirement of a novel hardware, by deleting the 3 stage test to determine the patentability of CRIs and the ensuing restrictive illustrative examples of claims which are considered not patentable, thus leaving more room for interpretation as to what constitutes patentable subject matter.
Algorithms, Mathematical Formulae and Business Methods, require mindful analysis:
The 2017 Guidelines clarify that mere presence of a mathematical formula in a claim, may not necessarily render it to be a “mathematical method” claim. For e.g., inventions that include mathematical formulae, thus resulting in systems for encoding, reducing noise in communications/ electrical/ electronic systems or encrypting/ decrypting electronic communications, may not be excluded from patentability.
Similarly, it has been clarified that mere use of terminology such as “enterprise”, “business”, “business rules”, “supply chain”, “order”, “sales”, “transactions”, “commerce”, “payment” etc. may not render a claim non-patentable unless the same actually relates to carrying out any business, trade or any other commercial activity.
To emphasize further, the 2017 Guidelines clearly state that clause 08.03.05.10 of the Manual of Patent Office Practice and Procedure is deleted, since it states that, “A mathematical or business method or a computer programme per se or algorithms are not inventions and hence not patentable.”
As has been mentioned in all the previous versions of the Guidelines, the 2017 Guidelines too do not constitute rule making. Therefore, in the event of any conflict between the Guidelines and the provisions as laid under the Indian Patents Act, 1970 or the Indian Patent Rules, 2003, the said provisions of the Act and Rules will prevail over these guidelines.