28 September 2015

Software inventions - Examining patentability

by Dr. Mukundan Chakrapani

The Indian Patent Office recently released the final version of the Guidelines for Examination of Computer Related Inventions. They offer much needed clarity on the vexing issue of determining subject matter eligibility of Computer Related Inventions (“CRI”), a.k.a. software inventions. A standout feature of the final Guidelines is its singular focus on the core issue of providing directions to Patent Examiners in the examination of applications directed to CRIs.

Setting a positive tone from the outset, the Guidelines seek to determine patent-eligible subject matter based on considering ‘the claims, taken as a whole’ and not denying a patent if in substance the claims “do not fall in any of the excluded category.

Even in the determination of patent eligibility of claims directed to mathematical and business methods, which have an absolute bar under Section 3(k), the Final Guidelines urge the Examiners to consider the claim as a whole before rejecting the claims. Specifically, the Final Guidelines states that the mere recitation of a mathematical formula in a claim “would not necessarily render the claim to be a mathematical method.” Similarly, the mere usage of business-related terminology, such as enterprise, business rules, supply-chain, commerce, transactions, payments, etc., “should not lead to the conclusion of a Computer Related Invention being just a ‘Business Method.’'

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