Rapid growth of IT industry in the past two decades proves that IT is being emerged as a vital tool in the domain of scientific development and nation's growth. As computer and its peripherals are the core elements in the application of IT, the traditional patent regime has to cope with the challenges of these computer technologies and has been a subject of international attention in the recent past. For this reason, the Indian Patent Office has started confronting with the issue of patentability criteria of computer related inventions (CRIs).
Patents (Amendment) Act 2002, for the first time explicitly introduces patentability criteria for the CRIs. The said criteria, under section 3(k), included the legal boundary of the word "software or computer program per se" i.e. under what extend a CRI falls in the patentable subject matter. With this further move, in 2005, in order to provide uniform and consistent practice in the examination of such inventions, the Indian Patent Office has designed and published a guideline for the examination of patent applications in the field of CRIs in the "Manual of Patent Practice and Procedure, 2005. In 2013, said guideline is further modified by defining various crucial terms (like “Technical Effect" and "Technical advancement") and by bringing out various examples of the case laws relating to CRIs for better understanding of the issues related to determination of excluded subject matter of CRIs during the examination procedure.
The overviews of the listed issues under the currently provided guidelines are as follows;
The mainly focused issue in this guideline is the section 3(k) of Indian Patent Act, which reads as "a mathematical method or business method or a computer program per se or algorithms" is not patentable subject matter. More particularly, it (the guideline) focuses the computer related inventions that fall in the category of section 3(k). For this purpose, it clearly defines the computer related inventions as" any invention which involves the user 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 computer program/programs".
According to the guideline, the examining procedure for the patent application of CRIs is quite common with other field of inventions to the extent of considering novelty, inventive step and industrial applicability except that the CRIs have to undergo an additional test of determination of excluded subject matter category. However, the determination of subject matter relating to one of the excluded category requires greater skill of the examiner. In this additional test, the CRIs that fall under purview of section 3(k) is divided into four types such as 1) claimed subject matter of inventions that relates to "mathematical method" 2) claimed subject matter of the inventions that relates to "business method" 3) claimed subject matter of the inventions that relates to “algorithms" and 4) claimed subject matter of the inventions that relates to “computer program". In consequence to this, the first three categories claimed in any form are filtered out and directly put in the excluded category even if the corresponding method claims are executed with the help of technology (Yahoo Inc Vs The Assistant Controller of Patents and Designs, Chennai & Rediff.com India Ltd: IPAB OA/22/2010/PT/CH).
While, in case of the fourth category, if the subject matter of claims direct toward computer programs or computer program product or if the claims direct toward a computer or similar processing device to automate what was previously done manually then such type of claims are also put in the excluded category. Also, if the claimed subject matter belongs to “means plus function" format then unless the structural features of those means are disclosed in the specification the claims will be rejected. For example, rejecting the claim 24 of patent application 4037/DELNP/2006 titled as “Method and system for selecting an access network", controller held that the claim 24 which is an independent system claim comprises four types of “means" referred by reference numerals 12, 13, 14 and 15. None of said means either described or any corresponding hardware structures were disclosed in the complete specification. As such type of claims is invalid, it is not allowed.
In contrary, if the subject matter of claims relate to the computer program direct towards a computer program embedded into a hardware unit for defining its functionality then such type of claims cannot be excluded from patentability. Provided that such hardware unit should passes the test of novelty, inventive step and industrially applicability. For example, rejecting the patent application 1733/DELNP/2005 titled as “A method and a device for processing bit symbols generated by a data source, a computer readable medium and a computer program element", controller held that the alleged invention relates to a device for processing of the video, image or audio data and said data is an output of the mathematical equation of claim 1 programmed in the device. Although, the claims are drafted as device but in fact they are not more than a mere processing of data by mathematical equations using various algorithms since the various units such as scanning unit, encoding unit etc., functions in a known manner and no novel hardware unit of the device is sufficiently defined in the specification anywhere.
Additionally, the claimed subject matter related to computer program should also describe its technical effect and technical advancement by solving a technical problem of the prior art. For this purpose, the technical effect may generally include higher speed, reduced hard-disc access time, more economical use of memory, more efficient data base search strategy, more effective data compression techniques, improved user interface, better control of robotic arm and improved reception or transmission of radio signal. Also, for clarity purpose, claims directing such kind of hardware device may incorporate a “process limitation" for said hardware, where “limitation" means defining the specific application or specific function not the general application or general function. For example, in a computer comprising means for storing signal data and a first resistor for storing data, the clause starting with “for" describes the function or process carried out by the apparatus, and form the part of “process limitation" here.
Conclusion: Generally, patent protection for a CRI is accorded when the software is embedded into a novel and inventive hardware unit that has some technical effects and technical advancement in light of solving a technical problem of the prior art. Further, some computer-implemented inventions are patentable whilst others are not. This is because software straddles the technological and business worlds. Whether a computer related invention is patentable depends on the contribution the invention makes. For example, if it provides improved control of a car braking system, it is likely to be patentable. However, if it merely provides an improved accounting system, it is probably not patentable.
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