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12 September 2017
The examination of computer related inventions (CRIs) in India has long been under controversy in view of the grey area that exists in the field of patenting of computer related inventions.
The Indian Patent Office has recently taken a positive step to improve the examination of patent applications in regard to CRIs. The Patent Office has revised the Guidelines on Examination of CRIs and has brought much needed clarity and consistency in examination of patent applications for CRIs.
The revised CRI guidelines issued on June 30, 2017, are a welcome move by the Indian Patent Office. The drop of poison in the earlier guidelines, i.e., the CRI Guidelines of 2016, was the requirement of novelty of the hardware components. Requirement of novelty of the hardware when the invention resides in combination of hardware with new software – CRI – was wholly contradictory to the Indian Patents Act, and there was a pressing need to exclude such requirement. The requirement was adversely affecting the companies in relation to the examination of their patent applications related to CRI.
When an invention resides in the combination of software and hardware and, as a result of the new software in combination with hardware the hardware exhibits beneficial results, there ought not to be a need for the hardware to be novel by itself. Take, for example, a printer which gives 300 clear prints per cartridge, for which software is invented which, when combined with the same printer, gives 400 clear prints as the software optimizes the printing operation. The same software can also enhance the copying capacity of photocopiers. The inventor claims the combination of the software and the hardware. He does not claim the software per se. However; according to the Guidelines of 2016, the printer or other device should by itself also have new features.
In another example, there is a motor car which gives an average mileage of 10 km per liter. Software is provided which optimizes the fuel consumption when the vehicle is stationary and the mileage increases to 11 km per liter. According to the Guidelines of 2016, the engine of the vehicle would by itself need to have new features so as to be patentable. The Guidelines of 2016 thus prevented the invention from being properly judged as a whole.
The major changes in the Guidelines of 2017 vis-à-vis the Guidelines of 2016 is that:
1. The Test/ Indicators To Determine Patentability Of CRIs have now been deleted; and
2. All negative examples have also been deleted.
Importantly, in the CRI Guidelines of 2017, there has been an exclusion of the requirement of novel hardware to be defined in conjunction with a computer program (software), when method claims pertaining to a new computer program in combination with the hardware are being claimed. It was found that some examiners have rejected a few cases simply in view of the novel hardware requirement in the 2016 Guidelines without judging the invention as a whole and which has negatively affected the applicants.
It appears that the Indian Patent Office is finally recognizing the fact that technology is moving towards software innovation, especially weaving innovative software around existing hardware to achieve the desired objectives.
It is the need of the hour that claims be judged based on their underlying substance and not merely on the presence of software or processors or memory in apparatus/system claims because a claim to a processorbased system, when programmed to operate in a particular manner, ought to be allowable, as also the method of conditioning a computer-based system to operate in a particular way, as such a device no longer remains conventional hardware but becomes a dedicated system.
While the Guidelines of 2017 have been welcomed by all in view of the deletion of the requirement of novelty of hardware, the negative aspect of Guidelines of 2017 is that all the examples have been excluded, thereby depriving the examiners of practical guidance, landmarks or precedents in respect of computer related inventions.
It is expected that in view of the Guidelines of 2017, the examination of applications related to CRI will improve in view of the novel hardware requirement having been removed.
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