The Office of the Controller General of Patents, Designs and
Trade Marks (CGPDTM) has reissued a set of guidelines applicable to
Examination of Computer Related Inventions (CRIs) on February 19,
2016. The aim of these guidelines are to "further foster
uniformity and consistency in the examination of CRIs" and
"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". The guidelines are being
hailed as a welcome development by various IT think tanks who had
opposed the August, 2015 guidelines issued by the Indian Patent
Office (IPO) related to CRIs.
IPO in August, 2015 issued guidelines pertaining to Examination
of CRIs which allowed patenting of software, a hitherto contentious
issue for the software industry at large. The guidelines were met
with heavy opposition from a lobby of various IT stakeholders who
were concerned about the detrimental effect on IP innovators
writing code against infringing action by multinational companies.
The guidelines were also criticized for bypassing the explicit
provisions of Section 3(k) of the Indian Patents Act which
excludes: "a mathematical or business method or a computer
program per se or algorithms" from patentability. However, in
December, 2015, after significant pressure exerted by several IT
groups, including appeals made to the Prime Minister's Office,
the Indian Patent Office stayed the guidelines, paving way for the
current substantially amended revised guidelines.
The main provisions of the revised guidelines are highlighted
Computer programs per se are excluded from patentability
Three step test for determining patentability of CRI has been
laid down which include:
1) Properly construe the claim and identify the actual
2) If the contribution lies only in mathematical method,
business method or algorithm, deny the claims;
3) If the contribution lies in the field of computer programme,
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 programme in itself is never
patentable. If the contribution lies solely in the computer
programme, deny the claims. If the contribution lies in both the
computer programme as well as hardware, proceed to other steps of
If the patent application relates to apparatus/system/device
i.e. hardware based inventions, each and every feature of the
invention shall be described with suitable illustrative drawings.
If these system/device/apparatus claims are worded in such a way
that they merely and only comprise of a memory which stores
instructions to execute the previously claimed method and a
processor to execute these instructions, then this set of claims
claiming a system/device /apparatus may be deemed as conventional
and may not fulfil the eligibility criteria of patentability.
If, however, the invention relates to 'method', the
necessary sequence of steps should clearly be described so as to
distinguish the invention from the prior art with the help of the
flowcharts and other information required to perform the invention
together with their modes/ means of implementation.
The working relationship of different components together with
connectivity shall be described.
The desired result/output or the outcome of the invention as
envisaged in the specification and of any intermediate applicable
components/steps shall be clearly described.
Claims which are directed towards computer programs per se are
excluded from patentability such as, (i) Claims directed at
computer programmes/ set of instructions/ Routines and/or
Sub-routines. (ii) Claims directed at "computer programme
products" / "Storage Medium having instructions" /
"Database" / "Computer Memory with instruction"
i.e. computer programmes per se stored in a computer readable
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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