19 May 2016

Ambiguous standard for examination of CRIs

by Ankur Garg Anurit Banerjee

The Indian Patent Office had issued the modified guidelines for examination of Computer Related Invention (CRI) [see end note 1] on 19 Feb 2016. The CRI guidelines propose a framework for assessing patent eligibility of such claims under section 3(k) of the Patents Act, 1970.

Specifically, the CRI guidelines provide a three-stage test for determining whether a claim falls within the exclusions of section 3(k) of the Patents Act, 1970:

  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 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 claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.

One can infer from the above that if the contribution of a claim solely lies in a mathematical method, a business method, or an algorithm, the claimed subject matter is patent ineligible. However, if the contribution of the claim lies in a computer program, and the invention is claimed in conjunction with a novel hardware, the application should be examined further to determine patentability of the invention. On the other hand, if the contribution of the invention is solely in a computer program, the claim is patent ineligible.

In instances, where the invention incorporates no novel hardware, it is to be seen if the contribution lies both in the computer program and the hardware. The hardware may be an existing hardware, however, the contribution of such invention should not lie solely in the computer programme. In other words, the claim, where a combination of computer program as well as hardware provide a contribution, should be considered patent eligible.

Therefore, determination of patent eligibility under the CRI guidelines does not require presence of novel hardware as the only condition.

In a recent order [see end note 2], the Asst. Controller of Patents and Designs rejected a patent application, holding that the claims of the patent application were directed to non-patentable subject matter under section 3(k) of the Act, in view of the re-issued CRI guidelines. The patent application relates to a computer network and a method of communication between an email client and an email server using an appropriate application. Based on the subject matter of the case and in view of the CRI guidelines, the Applicant argued that the contribution of the claims lies in the combination of computer program and hardware, and that the contribution of the claims also provides technical effect.

The Asst. Controller, however, did not concur with the Applicant. While he admitted that the subject matter of the claims does not relate to a mathematical or a business method, to judge patent eligibility of the claims he has relied on a new two point analysis, instead of relying on the framework of the CRI guidelines:


  1. A hardware implementation performing a novel function is not patentable if that particular hardware is known or is obvious irrespective of the function performed; and
  2. If the novel feature of the invention resides in a set of instructions (program) designed to cause the hardware to perform desired operations without special adoption of the hardware or modification of the hardware, then the matter claimed either alone or in combination is not patentable.

Accordingly, the two-step analysis captures two criterion for patent eligibility of CRI applications, namely, a novel hardware and a novel computer program implemented by a specially adopted hardware. According to the Asst. Controller, if a CRI is implemented by a novel hardware, it is patent eligible, however, if the CRI is implemented on a known or an obvious hardware, it is not patent eligible.

Moreover, for a novel CRI to be patent eligible, it is to be implemented either by a specially adopted hardware, or by a hardware modified to execute the CRI. It would be evident that although the two-point analysis appears to describe two different scenarios of patent eligibility for CRIs, both the scenarios conclusively point towards a common requirement of presence of a specially adopted and/or a novel hardware.

According to the guidelines for examination of CRI, a claim for a CRI, where the contribution lies in both the software and hardware, is patent eligible.

During assessment of the current application, the Asst. Controller, agreed that there was a technical contribution in that the invention resulted in reduction of processing time of receiving of a message. However, the Asst. Controller identified the contribution of the invention to be limited to a software since the patent application did not disclose a novel hardware component, except for commonly used hardware, such as a server. For the contribution of any claim to lie in a combination of hardware and computer program, the Asst. Controller identifies presence of a novel hardware as a mandatory condition.

In the past, Controllers have relied on similar interpretation of Section 3(k) for patent eligibility of CRIs. Another patent application (Application Number 0138/DELNP/2003), was rejected by the Patent Office relying on a similar two step analysis, as relied on by the Asst. Controller for the current application. Accenture Global Services GMBH, the Applicant for the other patent application, had appealed to the Intellectual Property Appellate Board (IPAB) against the order [see end note 3] of the Controller. The IPAB did not concur with the decision of the Controller and stated [see end note 4] that the Controller’s decision is based on standards which are neither mentioned in the Indian Patents Act, nor in the Patent Office Manual or in any guidelines by the Indian courts. The IPAB even stated that the decision of the Controller was based on ill-founded premises and is far from being logical and reasonable.

We understand that the Government of India has already initiated a process of reviewing the CRI guidelines. It is hoped that new guidelines for examination of CRIs would soon be issued setting a clear, unambiguous standard for examination of CRIs.

[The authors are Principal Associate and Associate respectively, IPR Practice, Lakshmikumaran & Sridharan, New Delhi]

End Notes:
  1. CRI Guidelines issued by the IPO, dated February 19, 2016 Link
  2. Controller order for Application Number 1500/DEL/2003
  3. Controller order for Application Number 01398/DELNP/2003
  4. Order No. 283 of 2013


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