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 -
- the use of satellite, microwave, terrestrial line or other communication media; and
- 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.
- 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.
- 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.
- 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.
- 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;
- receive a request comprising a product identifier from a first one of the plurality of client computer,
- query the database in response to the received request to retrieve product information,
- 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.