On 19 February, the Indian Patent Office amended its guidelines to provide clarity for patent examiners and practitioners on patenting computer-related inventions (CRIs). The amendments parallel similar clarifications and revisions publicised in other countries including the United States and Singapore.
The reaction from some quarters has been to assert that software patents are now excluded from patentability. This is incorrect. While the guidelines provide examples of what does not constitute a patentable CRI, the exclusions to patentability, defined under section 3 of the Indian Patents Act 1970, remain unchanged.
Item 1.3 of the amended guidelines states:
“The objective of this document is to bring out clarity in terms of exclusions expected under section 3(k) so that eligible applications of patents relating to CRIs can be examined speedily.”
To this end, the most significant changes relate to:
- the test used for examining CRIs
- the basis required in the specification to support CRIs
The Test Used for Examining CRIs
The previous test for examining CRIs was a six-question test attempting to codify the technical features of CRIs. This test was not sufficiently flexible to cope with the wide variety of CRIs for which patent protection is available.
The amended guidelines set out a more flexible, three-step test requiring examiners to:
- properly construe the claim and identify the actual contribution
- if the contribution lies only in mathematical method, business method or algorithm, deny the claim
- if the contribution lies in the field of computer program, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer program in itself is never patentable. If the contribution lies solely in the computer program, deny the claim. If the contribution lies in both the computer program as well as hardware, proceed to other steps of patentability.”
The guidelines also state in regard to step 3:
“Even when the issue is related to hardware/software relation, (e.g. when the claims recite ‘processor is programmed to… or ‘apparatus comprising a processor and configured / programmed to…) the expression of the functionality as a ‘method’, is judged on its substance.”
The amended guidelines focus on the substance of the invention, rather than the form of the claims. Substance that would otherwise be excluded from patentability cannot be rendered patentable merely by defining physical components in the claims. Instead, for CRIs the substance of the invention should be evident outside of the computer program, in the hardware or a combination of the computer program and hardware.
This is similar to the approach taken in many other jurisdictions that require the effect of the invention to be concrete in the sense that it is tangible or observable in the machine in which the software or computer program is executed.
Specification Support for CRIs
The amendments to the requirements for sufficiency of disclosure recognise that the grant of patents is given in exchange for a clear, real and complete disclosure of the invention.
In summary of item 4.4 Sufficiency of Disclosure the guidelines direct examiners and practitioners away from the mere recitation of hardware features not just in the claims, but also in the description. In particular, the description must define the interaction between hardware features and the computer program and, similarly, any functional claim language must be described with reference to structure. The most functional claim language, “means plus function” features, is specifically dealt with:
“The ‘means’ mentioned in the claims shall clearly be defined with the help of physical constructional features and their reference numerals to enhance the intelligibility of the claims. The claims in means plus function form shall not be allowed if the structural features of those means are not disclosed in the specification.
Further, if the specification supports implementation of the invention solely by the computer program then in that case means plus function claims shall be rejected as these means are nothing but computer programme per se.
Where no structural features of those means are disclosed in the specification and specification supports implementation of the invention solely by the software then in that case means in the “means plus function” claims are nothing but software. ” (emphasis added)
The guidelines also now require all claim features to the represented in the drawings, similar to the requirements in the United States, and there to be clear disclosure of the working relationship between different components (e.g. software and hardware) necessary to achieve the invention.
Moreover, the desired result or outcome of the invention must be envisaged in the specification.
The amendments clarify that:
- the substance of the invention must be evident outside of subject-matter that is otherwise excluded from patentability
- all components must be fully described and shown
- any working relationships between components, and the effect of those relationships, must be described
The guidelines do not restrict that which is patentable in India. Instead, the guidelines ensure examiners can rely on the specification to inform them of all of the features of the invention and how they interact.