India: Examination Of Computer Related Inventions - Draft Guidelines By Indian Patent Office

The Indian Patent Office has issued draft guidelines for the examination of Computer Related Inventions (CRIs). The basic aim of the draft guidelines is to bring uniformity and consistency in the examination procedure. The guidelines discusses various provisions of the patentability of the CRIs, procedure to be adopted by examiners for examination of such patent applications and jurisprudence involved in granting or rejecting patents in the field of technology. The draft guidelines also discusses various examples of the contents of the complete specification such as description, claims, prior art etc. for better understanding of the issues involved. We will discuss some important points as mentioned in the draft guidelines.


At the very outset, the guidelines define important terminologies used while dealing with the CRIs. Terms which are defined by the Indian Statutes are construed accordingly while terms which are not defined by any statute, ordinary dictionary meaning have been taken into consideration. Some of the important terms are as mentioned below:

Computer: The term "Computer" is defined in The Information Technology Act, 2000 (No. 21 of 2000) (hereinafter IT Act) as "any electronic magnetic, optical or other high-speed data processing device or system which performs logical, arithmetic, and memory functions by manipulations of electronic, magnetic or optical impulses, and includes all input, output, processing, storage, computer software, or communication facilities which are connected or related to the computer in a computer system or computer network."

Computer Network: The term "Computer Network" is defined in IT Act as "the interconnection of one or more computers through -

  1. the use of satellite, microwave, terrestrial line or other communication media; and
  2. terminals or a complex consisting of two or more interconnected computers whether or not the interconnection is continuously maintained;"

Computer related inventions: This term is not defined in any Indian statute. For the purpose of the guidelines, the term refers to any invention which involves the use of computers, computer networks or other programmable apparatus and includes such inventions, one or more features of which are realized wholly or partially by means of a computer programme/ programmes.

Data: As per IT Act, the term "data" refers to "a representation of information, knowledge, facts, concepts or instructions which are being prepared or have been prepared in a formalised manner, and is intended to be processed, is being processed or has been processed in a computer system or computer network, and may be in any form (including computer printouts, magnetic or optical storage media, punched cards, punched tapes) or stored internally in the memory of the computer."

Software: The term software is not defined in any statute. For the purpose of the guidelines, reference can be made to Oxford Advanced Learners Dictionary which defines the term "Software" as "the programs, etc. used to operate a computer".

Computer Programme: The term "Computer Programme" has been defined in the Copyright Act 1957 under Section 2 (ffc) as "a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result".

Per se: As per the Oxford Advanced Learners Dictionary "per se" as "'by itself' – "to show that you are referring to something on its own, rather than in connection with other things".

Various categories of claims concerning CRIs

The draft guidelines have categorized the claims of the CRIs broadly into four categories.

  1. Method/process: CRIs often carry method or process claims for e.g. "method/process for ...." Likewise claims relating to mathematical methods, business methods, computer programmes per say or algorithms are claimed in method/process format. The role of the examiner becomes very critical in ascertaining whether the invention falls under one of excluded subject matter.
  2. Apparatus/system: the other main preamble used for CRIs is "apparatus/system for......" and often crafted to appear in means + function format. Here, the examiners' are required to properly construe whether the claimed subject matter indeed relate to any apparatus which is novel, inventive, having industrial applicability or is just formatted to appear so.
  3. Computer program product: These type of claims relating to compute programme products are only computer program per se simply expressed on a computer readable storage medium (CD, DVD, Signal etc.) are not allowable.
  4. Examination procedure: The draft guidelines states that the examination procedure for CRIs is common with the other inventions to the extent of considering novelty, inventive step and industrial applicability. However, determining as to whether the subject matter is related to one of the excluded categories requires great skill and as these guidelines mainly focus on this aspect, we will discuss the same afterwords.

Determination of excluded subject matter relating to CRIs

  • It is comparatively easy to determine the patentability of inventions relating to apparatus / system having hardware implementations than to process / method related inventions. It depends on the crucial judgment of the examiner as to whether claimed method/process can be construed to qualify under the process/method as defined in the statutes. Since the patent is granted to all fields of technology, it is important to ascertain the nature of the claimed method/process as to whether the same relates to technological field.
  • The investigation of inventive step involves a check on whether the invention involves technical advance as compared to the existing knowledge. Therefore the method/process has to be judged on the technical advancement over the prior art.
  • Any subject matter relating to non technological field shall not be considered patentable. The exclusion under sub-section (k) to (n) of section 3 of the Patent Act, 1970, explicitly carve out specific categories out of the purview of definition of invention under the Patent Act, 1970, considering them as mental, intellectual, aesthetic and/ or abstract subject matter not involving technical character.
  • Mathematical, business related methods, computer programme per se, or algorithm, mental act, aesthetic creation, method of playing games and method of presentation of information are excluded from the ambit of patentability.
  • This is one of the important points mentioned in the guidelines. Essentially all computer programmes need some hardware support for its functioning. Does this imply that all such programmers are away from the purview of computer programme per se. The question therefore, is whether a computer programme loaded on a general purpose known computer or related devices can be held patentable. In an application for patent for a new hardware system, the possibility of a computer programme forming part of the claims is not ruled out. The examiner is to carefully consider as to how integrated is the novel hardware with the computer programme. Further, whether the machine is programme specific or the programme is machine specific is important to ascertain. This requires critical analysis of the Examiners.
  • For considering the patentability of computer programme in combination with hardware features, the hardware portion has to be something more than general-purpose machine.
  • It is important to note that the term per se has been suffixed to the computer programme alone. Therefore, if the invention is relating to mathematical method, business method or algorithm, they are considered to be non-patentable by direct application of law.

The draft guidelines provides some illustrative examples of the claims of the patent applications to exhibit the approach, the Office adopts while deciding application relating to the excluded categories. Few illustrations are mentioned below:

Illustration 1: An application titled, "system and method for billing augmentation" was held as a business method.

The claims of the application recited a billing augmentation method in which a message from customer is received, analyzed for determining service charge category and accordingly billing event is generated to bill an amount to the customer. The method was simply linking business entities; hence the method is essentially a business method, because the processing steps of the method relate merely to automation of business processing steps. Hence, subject matter of these claims fall within scope of clause (k) of section (3) of the Patents Act, 1970

Illustration 2: A patent application was filed with the following main claims:

A method for generating a billing event for a download transaction of an application from a download server, wherein generating said billing event requires a first set of information and a second set of information, comprising:

  • storing said first set of information as a metadata, said metadata comprising a plurality of blocks;
  • responsive to the download transaction conducted by the download server, receiving raw transaction data, said raw transaction data comprising − a plurality of references to blocks of said metadata, and
  • said second set of information;.........

The Controller held that the scope of the invention involves a subscription transaction having a transaction processing environment using a transaction manager, subscription option, pricing information and a flowchart depicting a method of processing transaction data for a carrier's billing system which involves the step of creating a billing event containing pricing information associated with the data transaction of downloading an application by processing the raw transaction data and the metadata.

Thus, it is evident that the alleged invention relates to the processing of transaction data and billing for transactions across a data network which is a mere business method.

Illustration 3: A method of scoring compatibility between members of a social network, said method comprising the steps of:

preparing interest compatibility scores based on expressed Interests of the members of the social network; and

computing a compatibility score between a first member of the social network and a second member of the social network based on expressed interests of the first member, expressed interests of the second member, and the interest compatibility scores between the expressed interests of the first member and the expressed interests of the second member.

The Controller held that the said method for scoring compatibility between the social network users is nothing but a business method which shall be used commercially. Thus, the subject matter of the instant invention cannot be allowed u/s 3(k) of The Patents Act, 1970. Further, the said method for scoring compatibility between the social network users, say estimating the probability and dividing the estimated probabilities from the resultant product, is a mere mathematical method which cannot be allowed u/s 3(k) of The Patents Act, 1970.

The subject matter of the instant invention, say the method for computing compatibility score, is based on a scheme/predefined set of rules which cannot be allowed u/s 3(m) of The Patents Act, 1970. Hence, the application is rejected under section 15 of the Act.

Form and Substance

Judgement of patentability is comparatively easier for mathematical and business methods as compared to the computer programmes per se and algorithms related invention. The computer programmes are excluded from patentability and treated as a authors creation which is protected under Copyrights Act. Computer programmes are often claimed in the form of algorithms as method claims or system claims with some 'means' indicating the functions of flow charts or process steps. The algorithm related claims are even wider than the computer programmes claimed by themselves. A programme represents a particular set, the algorithm gives way for many programmes in different languages to be written based on the same algorithm. Thus, the inventions claimed in above forms are not patentable.

Further, when the invention is related to software/ hardware relation, the expression of the functionality as a method, is judged on its substance. It is well settled that the focus should be on the underlying substance of the invention, not on the particular form in which it is claimed. The exclusion of computer programmes per se could not be avoided merely by wording.

Illustration 4: In an invention titled "A Transaction processing method and system", the objection of examiner was that claims(s) (1 to5) and (13 to 16) fall(s) within the scope of section 3(k) of the Patent Act.

"A networked computer system for transaction processing comprising: a server configured to exchange data with a plurality of clients computers; a database operatively coupled to the server and storing chemical product data for a plurality of chemical products; a memory operatively coupled to the server and comprising instructions to configure the server to;

  1. receive a request comprising a product identifier from a first one of the plurality of client computer,
  2. query the database in response to the received request to retrieve product information,
  3. send the product information to the first client computer; and a formulation means to combine ingredients to form a chemical product."

In the above case, the Controller held that the claims were drafted as a system but in fact they are nothing more than a business method as the transaction processing in the alleged system is performed by the instructions stored in the memory to configure the server which in- turn performs the functions of receiving a request, querying the database and sending the product information.

Means Plus Function

Regarding Means Plus Function claims, the draft guidelines states that the same shall not be allowed if the structural features of those means are not disclosed in the specification.

Further, the Means Plus Function claims shall be rejected if the specification supports implementation of the invention solely by the computer program as these means are nothing but computer program per se.

Computer related invention in the field of Bio-Informatics /Bio-Technology

Nothing much has been stated in the draft guidelines with respect to the above field. Some examples are provided wherein the claims are directed towards computer related medium or computer medium which was objected by the Controller and the same were deleted.

At the end, the draft guidelines provides extensive flow charts illustrating procedure for examination of Computer Related Inventions.


The draft guidelines for examination of computer related inventions is a further step taken by the India Patent Office in order to bring uniformity and consistency in the examination of computer related invention. Prior to this, guidelines was issued for the examination of the biotechnology related inventions. The draft guideline discusses important issues related to computer programmes with the help of examples of decided cases and reasoning for the judgement.


1. Guidelines for Examination of Computer Related Invention dated 28th June 2013.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Singh & Associates
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Singh & Associates
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions