As per section 2(1)(j) of the patents Act, 1970 an invention means a new product or process involving an inventive step and capable of industrial application. Since patents are granted to inventions, whether products or processes, in all fields of technology, it is important to ascertain from the nature of the claimed Computer-related invention whether it satisfies the criteria of patentability.
It is evident that section 3(k) of the patents Act, 1970 excludes mathematical methods or business methods or computer programme per se or algorithms from patentability. 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 patent amendment Act 2002 introduced the term “per se” to Section 3(k). According to the Guidelines for Examination of Computer Related Inventions (CRIs), claims directed at computer programmes, set of instructions, routines and subroutines are excluded from patentability. Similarly, claims directed at computer programme products, storage mediums having instructions, databases are not patentable. The claims concerning Computer related inventions are often phrased as means for performing some function. The ‘means’ mentioned in the claims shall clearly be defined with the help of physical constructional features and their reference numerals to enhance the intelligibility of the claims. The claims in means plus function form shall not be allowed if the structural features of those means are not disclosed in the specification. Further, if the specification supports implementation of the invention solely by the computer program then in that case means plus function claims shall be rejected as these means are nothing but computer programmes per se. It is clear that the legislative intent of this section is not to reject all computer programmes based inventions but to recognise those inventions based on computer programmes which may include certain other things, ancillary thereto or developed thereon. However, the computer programmes as such are not intended to be granted patent.
With respect to patentability, going by the Guidelines (2016), the novelty criterion is to be adjudged based on the procedures laid down in 09.03.02 of Patent office manual. With respect to determination of inventive step, it is also similar to any other type of invention which involves identifying the person skilled in the art, determining the relevant common general knowledge of that person at the priority date, finding the inventive concept of the claim in question or if that cannot readily be done and determine the differences that exist between the matter cited as forming part of the state of the art and the inventive concept of the claim or the claim as construed. It can be said that to determine if the invention constituted an inventive step, it is to be seen from the standpoint of technological advancement as well as obviousness to a person who is skilled in the art.
With respect to the term “technical effect” which was defined for the purpose of as a solution to a technical problem, which the invention taken as a whole, tends to overcome such as higher speed, reduced hard-disk access time, more economical use of memory, more efficient database search strategy, more effective data compression techniques, improved user interface, better control of robotic arm, improved reception/transmission of a radio signal etc and the term “technical advancement” which was defined as contribution to the state of art in any field of technology does not find mention in the latest Guidelines which was pertinent for the determination of inventive step.
It is important to note that manuals and guidelines may be considered as a practical guide for the effective prosecution of patent applications in India. However, it does not constitute rulemaking and, hence, does not have the force and effect of law. These are revised from time to time based on interpretations by courts of law, statutory amendments, and valuable inputs from the stakeholders.’ Thus, computer related inventions should be drafted in such a way to avoid the statutory bar under section 3(k) and satisfy the criteria of patentability.