Patent &IPR

SECTION 3(K) AND COMPUTER

RELATED INVENTIONS
 SHIWANGI RANJAN
 SYBSC.
 ROLL NO. 50
  Information Technology includes the

PATENTABILIT whole scope of inputting, storing,

retrieving, transmitting and managing

Y OF data through the use of computers and

various other networks, hardware,
software, electronics and
COMPUTER telecommunication equipment

RELATED  Computer Related Inventions (CRIs)

are those that involve the use of
INVENTIONS computers, computer networks or
other programmable apparatus and
IN INDIA include such inventions having one or
more features of which are realized
wholly or partially by means of a
computer programme or programmes
 GUIDELINES ON EXAMINATION OF COMPUTER-RELATED
INVENTIONS IN INDIA

For many years, the regime of Computer-Related Inventions in India has remained unclear, as Section
3(k) of the Patents Act 1970, excludes the patentability of computer programmes per se.
As per the Guidelines for Examination of Computer Related Inventions by the office of the Controller
General of Patents, Designs, and Trademarks, the computer related inventions are defined as those that
involve:
 The use of computers
 Computer networks
 Other programmable apparatus.
 Inventions with one or more features that are realized wholly or partially by means of a computer
programme.
 REQUIREMENTS TO DETERMINE THE PATENTABILITY
OF CRIS

 Novelty – It is understood from the meaning of the word novelty, which means, the quality of
being new, original, or unusual. It is the foremost requirement to determine the patentability of
any invention. The criterion to judge the novelty can be understood from various provisions of:    
 Indian Patents Act, 1970
 Chapter 08.03.02 of the Patent Manual, 2008.

 Inventive Step – In accordance with the provisions of section 2(1)(ja) of The Patents Act, 1970,
 “inventive step” means a feature of an invention that involves technical advance as compared to
the existing knowledge or having economic significance or both and that makes the invention not
obvious to a person skilled in the art.
 WHAT ALL IS NOT PATENTABLE?
According to the guidelines issued by the office of the Controller General of Patents,
Designs, and Trademarks, below mentioned are excluded from patentability under
Computer-Related Inventions (CRIs):
 A mathematical or business method or a computer programme per se or algorithms.
 A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever
including cinematographic works and television productions.
 A mere scheme or rule or method of performing mental act or method of playing a game.
 A presentation of information.
 The topography of integrated circuits.
 CLAIMS DIRECTED AS "MATHEMATICAL
METHOD"
 Mathematical methods, like a method of calculation, formulation of equations,
finding roots of numbers and all other similar acts of mental skill, are not patentable.
 Mere manipulations of an abstract idea or solving purely mathematical problem/
equations without specifying a practical application also attract the exclusion under
this category.
 Below mentioned does not come under exclusion:
 Encoding
 Reducing noise in communications/ electrical/electronic systems
 Encrypting/ Decrypting electronic
 CLAIMS DIRECTED AS "BUSINESS
METHOD"
 The claims drafted not directly as "business methods" but apparently with some unspecified means are held
nonpatentable.
 If the claimed subject matter specifies an apparatus and/or a technical process for carrying out the invention (even
partly), the claims shall be examined as a whole.
 When a claim is "business methods" in substance, it is not to be considered a patentable subject matter.
 Mere presence of words like, "enterprise", "business", "business rules", "supply chain", "order", "sales",
"transactions", "commerce", "payment", etc. in the claims may not lead to conclusion of an invention being just a
"Business Method".
 If the subject matter is essentially about carrying out business/ trade/ financial activity/ transaction and/or a
method of buying/selling goods through the web (e.g. providing web service functionality), the same should be
treated as a business method and shall not be patentable.
CLAIMS DIRECTED AS "ALGORITHM"

A set of rules or procedures or any sequence of steps

Any method expressed by way of a finite list of defined
instructions, whether for solving a problem, and
Whether employing a logical, arithmetical or computational
method, recursive or otherwise, are excluded from patentability.
CLAIMS DIRECTED AS "COMPUTER PROGRAMME
PER SE"

 Computer programmes
 Set of instructions
 Routines and subroutines.
 Computer programme products
 Storage Medium having instructions
 Database
 Computer Memory with the instruction stored in a computer-readable medium.
 GRANTED CASES OF CRIS IN INDIA
Application number 5992 / DELNP / 2005 entitled “A SYSTEM FACILITATING a
COMPUTER OBJECT ACCESS CONTROL” : It was assigned to the Indian patent
number 247539 on April 18, 2011, with the Indian patent office. This patent calls for the first
US patent US10 / 609,104 with PCT International application number PCT / US2004 /
019987.
Subject Matter : The subject matter of this patent concerns a program that simplifies
computer access control of computer hardware, including screen computer display, graphical
interface (100), word field (102) that displays the name of the computer object; and one
access control or access control forums (110) that are grouped together and display selected
computer gaps (112C-112E) of the computer object, with at least one computer-compatible
computer space and at least one of the computer gaps (112A, 112B, 112F) compatible with
access to one or more computer hardware
 GRANTED CASES OF CRIS IN INDIA
Application number 1398/DELNP/2003 : It is now a granted patent as patent number 256171. This patent application was initially
refused for patent registration by patent office under the provisions of Section 3(k) of the Indian Patents Act for a system for
developing Internet-hosted business applications. In the first examination report (FER), dated 29 January 2008, in addition to other
grounds, the atent office objected to the claims under Section 3(k) of the Act.
Standard of examination of the claims used by the Controller :
 "A hardware implementation performing a novel function is not patentable if that particular hardware is known or is obvious
irrespective of the function performed.
 If the novel features of the invention resides in a set of instructions (programme) designed to cause the hardware to perform the
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.”
Final Decision : The appellant challenged the decision of the Controller in the (Intellectual Property Appellate Board) IPAB alleging
that the abovementioned standard, applied for examining the claims, were neither specified in the Act nor the MPPP. Further, no
Indian court had laid down such guidelines in any case. Agreeing with the Applicant, the IPAB observed that the standards applied by
the Controller to refuse the application were nowhere prescribed in Act, MPPP or in any guidelines from the courts and held the order
to be based on “ill founded premises and was far from being logical and reasonable”. Upon reconsideration, the claims, without any
significant amendments, were held to be not relating to software (computer program) per se. Rather the claims were found to relate to
a system having an improvement in web services and software, and were allowed.
 GRANTED CASES OF CRIS IN INDIA
 Application No. 830/CHENP/2009 : Facebook was granted a patent in February 2017 on a
method “for generating dynamic relationship-based content, personalized for members of the
web-based social network”. Facebook appealed that the invention “implements a technical
process and has a technical effect.” Facebook was approved another patent (Application No.
6799/CHENP/2009) on 25th April, 2017 for a method to share its user-profile data with third
party applications on Facebook. Facebook stated that its invention was not merely a computer
program as it “includes hardware limitation and provides technical improvements and
benefits like checking privacy setting associated with the user profile”.
 Application No. 461/KOLNP/2009 : India granted a patent to Apple, in May 2017, on a
‘method for browsing data items with respect to a display screen associated with a computing
device and an electronic device’. Apple argued that the invention brings about an “improved
technical effect” and therefore, should be patentable.
 REJECTED CASE OF CRIS IN INDIA

Application number 3624/DELNP/2005 : The patent

application for the invention titled "A Chaos Theoretical
Exponent Value Calculation System" was denied patent by the
Indian patent office on the grounds that said invention falls
under the category of mathematical formulae even if it produces
a technical effect. The invention in this case claimed a
mathematical method for evaluating time series signals.
 CONCLUSION
Ensures the inventors to get a reasonable return on their commercially successful innovations.
Make easier to establish fruitful business collaborations for innovation-based startups and
small businesses.
Helps in promoting the knowledge sharing through patent disclosure, itself an important driver
of innovation.
It also helps in attracting investment partners and supports business expansion.
Hence, while drafting a software patent application one should keep in mind the patentability
criteria under section 3 (k) of Indian Patent Act which bars a mathematical or business method
or a computer programme per se or algorithms.
 REFERENCES
 MANUAL OF PATENT OFFICE PRACTICE AND PROCEDURE , Version 01.11, modified on March 22, 2011,
08.03.05.10,
p 91-97, http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_28_1_manual-of-patent-office-prac
tice_and-procedure.pdf
 Can you Patent a Software?,
https://www.lawyered.in/legal-disrupt/articles/can-you-patent-software-software-patenting-india/
 Is new hardware required for patenting computer implemented inventions in India?,
https://www.lakshmisri.com/insights/articles/is-new-hardware-required-for-patenting-computer/#
 New Guidelines for Computer Implmented Inventions. Are we still clear on what is Statutory?, August 12, 2013,
https://www.iiprd.com/new-guidelines-for-computer-implmented-inventions-are-we-still-still-clear-on-what-is-statut
ory/
 India: Computer-related inventions to be tested on technical contribution,
https://www.managingip.com/article/b1kqlt87g006c7/india-computer-related-inventions-to-be-tested-on-technical-
contribution
 Are Computer Related Inventions Patentable in India?,