The Indian Patent Office (IPO) recently modified the Computer-Related Inventions (CRI) Guidelines by removing the requirement of “novel hardware”. The Controller General of IPO passed an order in June 2017, revising the guidelines which were published in February 2016. According to the erstwhile guidelines, during the examination of a CRI, it was essential for the examiner to check whether the hardware used in the invention is “novel”. Under the patent law, novelty denotes originality of an invention.

The Guidelines for Examination of CRIs has seen tedious journey riddled with a lot of repairs.

According to Section 3(k) of the Patents Act, 1970, mathematical or business methods, algorithms and “computer programs per se” were rendered as unpatentable subject matter. In 2016, the IPO significantly revised the CRI guidelines and inserted the novel hardware requirement.

The amendment to the guidelines resulted in the deletion of one of the three-step test for patentability which stipulated that patents for software could only be claimed in conjunction with novel hardware. Computer programs in isolation were unpatentable, due to which the three-step test was brought into place. The test provided the following to determine patentability of CRIs-

“(1) Properly construe the claim and identify the actual contribution;     

(2) If the contribution lies only in mathematical method, business method or algorithm, deny the claim;

(3) If the contribution lies in the field of a computer programme, check whether it is claimed in conjunction with a novel hardware.”

The IPO’s official position on this matter claimed to be that the new guidelines merely “clarify” the patent office’s earlier stance, and do not represent a policy change at all. An unnamed government source was quoted by the Press Trust of India as saying:

“The language of the guidelines issued in February 2016 was somehow giving the understanding that ‘novel hardware’ clause is mandatory to seek patents for CRIs, which was not the case. But the Indian Patent Office has revised those guidelines and clarified that this clause is not mandatory.”

In totality, the new rules appear to indicate that the IPO has taken a more favourable approach towards patentability of CRIs as compared to the past. The revised guidelines will prove to be useful to patent applicants and practitioners alike. With the latest amendment, the IPO shall gear up to receive numerous applications from many companies and startups that have their base in software. Experts also speculate an acute decrease in the number of patent litigation that has been stalling the progress of Indian software fraternity.

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