Guidelines for
Examination ofComputer
RelatedInventions(CRIs)

Office of the Controller General of Patents, Designs andPage 1 of 18

Trade marks

2017

Contents
1.

Introduction ................................................................................................................................... 3

2.

Legal Provisions relating to CRIs ................................................................................................ 4

3.

Terms/Definitions ......................................................................................................................... 5

4.

Examination Procedure ................................................................................................................ 8

5.

Replacement of Provisions of Manual

6.

Applicability of Guidelines: ........................................................................................................ 18…………………………………………………………………………….18

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1. Introduction
1.1

Information Technology has gained special significance in the past two
decades. It has emerged as a vital tool for scientific development. The term
“Information Technology” encompasses the whole gamut of inputting,storing, retrieving, transmitting and managing data through the use ofcomputers and various other networks, hardware, software, electronics andtelecommunication equipment. Industry has witnessed rapid growth due tothe computerization of activities which were hitherto carried out manually ormechanically. The advent of the internet and the World Wide Web (www)coupled with the exponential growth of processing and storage power has led
to capabilities previously unheard of. The core elements in the application ofInformation Technology are computers and their peripherals. Computer
Related Inventions (CRIs) comprises inventions which involve the use ofcomputers, computer networks or other programmable apparatus and include
such inventions having one or more features of which are realized wholly or
partially by means of a computer programme or programmes.

1.2

Creators of knowledge in the domain of Computer Related Inventions (CRIs)
have consistently endeavored for appropriate protection of their IPRs. The
patent regimes have to cope up with the challenges of processing of patentapplications related to computer related inventions and other related
technologies. Major patent offices across the world are confronted with theissue of patentability of CRIs. They have developed examination guidelines/
manuals for examination of patent applications from these areas oftechnology so as to achieve uniform examination practices.

1.3

The aim of this document is to provide guidelines for the examination ofpatent applications in the field of CRIs by the Indian Patent Office so as tofurther foster uniformity and consistency in the examination of suchapplications. The objective of this document is to bring out clarity in terms of
exclusions expected under section 3(k) so that eligible applications of patents
relating to CRIs can be examined speedily.

1.4

The guidelines discuss various provisions relating to the patentability ofcomputer related inventions. The procedure to be adopted by the Patent
Office while examining such applications and the jurisprudence that has
evolved in this field has also been discussed. Various examples and case laws
relating to Computer Related Inventions (CRIs) have also been incorporated
for better understanding of the issues involved from the perspective of the
Patent Office.
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1.5

However, these guidelines do not constitute rule making. In case of any
conflict between these guidelines and the provisions of the Patents Act, 1970or the Rules made there under, the said provisions of the Act and Rules will
prevail over these guidelines. The guidelines are subject to revision from time
to time based on interpretations by Courts of law, statutory amendments andvaluable inputs from the stakeholders.

2. Legal Provisions relating to CRIs
2.1

The Patents (Amendment) Act 2002 (No. 38 of 2002) came into effect on
20th May, 2003. It amended the definition of invention1 under section 2(1)(j)as “Invention” means a new product or process involving an inventive stepand capable of industrial application;
and as per section 2(1)(ja)2 "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;
Further, section 2(1)(ac)3 states that “"capable of industrial application", inrelation to an invention, means that the invention is capable of being made orused in an industry;”
Section 2 (1) (l)4 defines “new invention” in The Indian Patents Act, 1970 as
follows:"New invention" means any invention or technology which has not been
anticipated by publication in any document or used in the country or
elsewhere in the world before the date of filing of patent application withcomplete specification, i.e. the subject matter has not fallen in public domainor that it does not form part of the state of the art;

1

Definition of Invention u/s 2(1)(j) under The Patents Act 1970 , after 2002 Amendments

2

Definition of ‘Inventive Step’ under The Patents Act 1970, after 2005 amendments

3

Definition of ‘Capable of Industrial Application’ under The Patents Act 1970

4

Definition of ‘New Invention’ under The Patents Act 1970, after 2005 amendments

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2.2

The Patents (Amendment) Act, 2002 also introduced explicit exclusions frompatentability under section 3 for Computer Related Inventions (CRIs) as
under:

(k)
(l)

(m)
(n)

a mathematical or business method or a computer programme per seor 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 methodof playing game;a presentation of information;(o) topography of integrated circuits;

3. Terms/Definitions
The terms/definitions often used while dealing with computer related inventions are
summarised hereunder. The terms which are defined in any of the Indian statutes
have been construed accordingly and those which have not been given any statutory
definition are normally construed in accordance with their use and ordinary
dictionary meaning.
3.1

Algorithm
The term “algorithm” is not defined in Indian statutes and hence, forinterpretation of this term, the general dictionary meaning is being used.
The Oxford Advanced Learners Dictionary defines „algorithm‟ as “a set of rulesthat must be followed when solving a particular problem ".

3.2

Computer
The term “computer” is defined in The Information Technology Act, 2000 (No.
21 of 2000) as “any electronic, magnetic, optical or other high-speed dataprocessing device or system which performs logical, arithmetic, and memory
functions by manipulations of electronic, magnetic or optical impulses, andincludes all input, output, processing, storage, computer software, orcommunication facilities which are connected or related to the computer in acomputer system or computer network.”
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3.3

Computer Network
The term “computer network” is defined in The Information Technology Act,
2000 (No. 21 of 2000) as “the interconnection of one or more computers

through (i) the use of satellite, microwave, terrestrial line or othercommunication media; and(ii) terminals or a complex consisting of two or more interconnectedcomputers whether or not the interconnection is continuously
maintained;”
3.4

Computer Programme
The term computer programme has been defined in the Copyright Act 1957
under Section 2(ffc) as "computer programme" means a set of instructions

expressed in words, codes, schemes or in any other form, including a machinereadable medium, capable of causing a computer to perform a particular task
or achieve a particular result;‟
3.5

Computer System
The term “computer system” is defined in The Information Technology Act,
2000 (No. 21 of 2000) as “a device or collection of devices, including input

and output support devices and excluding calculators which are notprogrammable and capable of being used in conjunction with external files,
which contain computer programmes, electronic instructions, input data andoutput data, that performs logic, arithmetic, data storage and retrieval,communication control and other functions;”
3.6

Data
The term “data” is defined in the Information Technology Act, 2000 (No. 21
of 2000) as “a representation of information, knowledge, facts, concepts or

instructions which are being prepared or have been prepared in a formalisedmanner, and is intended to be processed, is being processed or has beenprocessed in a computer system or computer network, and may be in any
form (including computer printouts, magnetic or optical storage media,
punched cards, punched tapes) or stored internally in the memory of thecomputer;”Page 6 of 18

3.7

Firmware
The term “firmware” is not defined in Indian statutes and hence, forinterpretation of this term, the general dictionary meaning is being used.
The Oxford Advanced Learners Dictionary defines “firmware” as “a type ofcomputer software that is stored in such a way that it cannot be changed or
lost”

3.8

Function
The term “function” is defined in the Information Technology Act, 2000 (No.
21 of 2000) as “"function", in relation to a computer, includes logic, control

arithmetical process, deletion, storage and retrieval and communication or
telecommunication from or within a computer.”
3.9

Hardware
The term “hardware” is not defined in Indian statutes and hence, forinterpretation of this term, the general dictionary meaning is being used. The
Oxford Advanced Learners Dictionary defines “hardware” as “the physical andelectronic parts of a computer, rather than the instructions it follows”.

3.10 Information
The term “information” is defined in The Information Technology Act, 2000
(No. 21 of 2000) as "information" includes data, message, text, images,

sound, voice, codes, computer programmes, software and databases or micro
film or computer generated micro fiche.”3.11 Manual
The term “Manual” as hereafter appears means “Manual of Patent Office
Practice and Procedure” issued by CGPDTM, as may be amended from time totime, unless there is anything repugnant in the subject or context.

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3.12 Per se
The term “per se” is not defined in Indian statutes including the Patents Act,
1970 and hence, for interpretation of this term, the general dictionary
meaning is being used.
The general dictionary meaning of “per se” is “„by itself” or “in itself” or “assuch” or “intrinsically” - to show that you are referring to something on its
own, rather than in connection with other things.
3.13 Software
The term “software” is not defined in Indian statutes and hence, forinterpretation of this term, the general dictionary meaning is being used. The
Oxford Advanced Learners Dictionary defines “software” as “ the programs,
etc. used to operate a computer”.

4. Examination Procedure
The examination procedure of patent applications relating to CRIs is the same asthat for other inventions to the extent of consideration of novelty, inventive step,industrial applicability and sufficiency of disclosure etc. The determination thatthe subject matter relates to one of the excluded categories requires greater skill
on the part of the examiner and these guidelines focus more on this aspect.

4.1

Novelty
Novelty is the foremost requirement to determine the patentability of any
invention. No invention can be held patentable if the subject matter as
described and claimed was disclosed before the date of filing, or before thedate of priority, as the case may be. The determination of novelty in respectof CRIs is no different from any other field of invention.
The novelty criterion is judged under various provisions of the Patents Act andRules made thereunder and also based on the procedures laid out in chapter
08.03.02 of the Manual.

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4.2

Inventive step
Inventive step is decided in accordance with the provisions of section 2(1)(ja)of the Indian Patents Act, 1970. The determination of inventive step withregard to CRIs is carried out in like manner as in other categories ofinventions.
As per 2(1)(ja), "inventive step" means a feature of an invention thatinvolves 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;

Hon’ble Supreme Court of India on inventive step: In Biswanath Prasad
Radhey Shyam vs Hindustan Metal Industries Ltd5 it was held that “Theexpression "does not involve any inventive step" used in Section 26(1) (a) of
the Act and its equivalent word "obvious", have acquired special significancein the terminology of Patent Law. The 'obviousness' has to be strictly andobjectively judged. For this determination several forms of the question havebeen suggested. The one suggested by Salmond L. J. in Rado v. John Tye &Son Ltd. is apposite. It is: "Whether the alleged discovery lies so much out of
the Track of what was known before as not naturally to suggest itself to aperson thinking on the subject, it must not be the obvious or naturalsuggestion of what was previously known."“Another test of whether a document is a publication which would negative
existence of novelty or an "inventive step" is suggested, as under:"Had the
document been placed in the hands of a competent craftsman (or engineer as
distinguished from a mere artisan), endowed with the common generalknowledge at the 'priority date', who was faced with the problem solved by
the patentee but without knowledge of the patented invention, would he have
said, "this gives me what I want?" (Encyclopaedia Britannica; ibid). To put itin another form: "Was it for practical purposes obvious to a skilled worker, inthe field concerned, in the state of knowledge existing at the date of thepatent to be found in the literature then available to him, that he would or
should make the invention the subject of the claim concerned ?"65

Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries Ltd (AIR 1982 SC 1444)

6

Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries Ltd (AIR 1982 SC 1444)

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In the F.Hoffman la Roche v Cipla7 case the Hon‟ble Delhi High Court had
observed that the obviousness test is what is laid down in Biswanath Prasad
Radhey Shyam vs Hindustan Metal Industries Ltd (AIR 1982 SC 1444) 8andthat “Such observations made in the foreign judgments are not the guiding

factors in the true sense of the term as to what qualities that person skilled in
the art should possess. The reading of the said qualities would meanqualifying the said statement and the test laid down by the Supreme Court.”
Hon‟ble High Court further added “From the bare reading of the afore quoted

observations of Supreme Court, it is manifest that the Hon'ble Supreme Court
has laid down the test for the purposes of ascertaining as to what constitutes
an inventive step which is to be seen from the standpoint of technologicaladvancement as well as obviousness to a person who is skilled in the art. It is
to be emphasized that what is required to be seen is that the invention should
not be obvious to the person skilled in art. These are exactly the wordings of
New Patents Act, 2005 u/s Section 2(ja) as seen above. Therefore, the samecannot be read to mean that there has to exist other qualities in the said
person like unimaginary nature of the person or any other kind of person
having distinct qualities…….. Normal and grammatical meaning of the said
person who is skilled in art would presuppose that the said person would havethe knowledge and the skill in the said field of art and will not be unknown toa particular field of art and it is from that angle one has to see that if the said
document which is prior patent if placed in the hands of the said person
skilled in art whether he will be able to work upon the same in the workshop
and achieve the desired result leading to patent which is under challenge. If
the answer comes in affirmative, then certainly the said invention underchallenge is anticipated by the prior art or in other words, obvious to theperson skilled in art as a mere workshop result and otherwise it is not. The
said view propounded by Hon'ble Supreme Court in Biswanath Prasad (supra)
holds the field till date and has been followed from time to time by this Court
till recently without any variance….. Therefore, it is proper and legallywarranted to apply the same very test for testing the patent; be it any kind ofpatent. It would be improper to import any further doctrinal approach bymaking the test modified or qualified what has been laid down by the Hon'ble
Supreme Court in of Biswanath Prasad (supra).”7

8

F. Hoffmann-La Roche Ltd vs Cipla Ltd., Mumbai Central, ... on 7 September, 2012
Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries Ltd (AIR 1982 SC 1444)

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The “obviousness” must be strictly and objectively judged9. While determining
inventive step, it is important to look at the invention as a whole. It must be
ensured that inventive step must be a feature which is not an excluded
subject itself. Otherwise, the patentee by citing economic significance or
technical advance in relation to any of the excluded subjects can insist upon
grant of patent thereto. Therefore, this technical advance comparison should
be done with the subject matter of invention and it should be found it is not
related to any of the excluded subjects.10
Accordingly, the following points need to be objectively judged to ascertain
whether, looking at the invention as a whole, the invention does haveinventive step or not:1. Identify the "person skilled in the art", i.e competent craftsman orengineer as distinguished from a mere artisan;
2. Identify the relevant common general knowledge of that person at
the priority date;
3. Identify the inventive concept of the claim in question or if thatcannot readily be done, construe it;
4. Identify what, if any, differences 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;
5. Viewed without any knowledge of the alleged invention as claimed,
do those differences constitute steps which would have been
obvious to the person skilled in the art or do they require any
degree of inventive ingenuity?

4.3

Industrial Applicability:
In patent law, industrial applicability or industrial application is a patentability
requirement according to which a patent can only be granted for an invention

9

Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries Ltd (AIR 1982 SC 1444)

10

IPAB in Yahoo Inc. (Formerly Overture Service Inc.) v. Assistant Controller of Patents and Designs & Rediff.com India
Limited (OA/22/2010/PT/CH dated 8th December, 2011)

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which is capable of industrial application, i.e. for an invention which can bemade or used in some kind of industry.
It has been defined in section 2(1)(ac) of Indian Patents Act, 1970 as follows:"capable of industrial application", in relation to an invention, meansthat the invention is capable of being made or used in an industry;
The requirement of workability and usefulness are both connected to
the requirement of industrial applicability. If an invention is notworkable, it means that it is also not industrially applicable. The patent
specification must disclose a practical application and industrial use forthe claimed invention wherein a concrete benefit must be derivabledirectly from the description coupled with common general knowledge.
Mere speculative use or vague and speculative indication of possible
objective will not suffice.
4.4

Sufficiency of Disclosure:
Grant of patents is quid pro quo11 to disclosure. It is for the disclosure of
invention by the applicant that the patent rights are granted to him for alimited period of time, if all criteria of patentability is fulfilled. The Patents Act,
1970 requires the applicant to specify „what‟ is the invention and „how‟ toperform it. The invention shall be described fully and particularly to satisfy the„what‟ requirement and further the best method of performing the invention
known to the applicant to satisfy the „how‟ requirement. The complete
specification should therefore disclose the invention completely to meet therequirement of the Patents Act and should also enable a person skilled in theart to work the invention without any assistance of the patentee or any
further experimentation. The description must be unambiguous, clear, correct
and accurate. It must not contain any statements which may mislead theperson skilled in the art to whom the specification is addressed. While therequirements of sufficiency of disclosure is considered generally in all fields ofinvention; in cases of patent application concerning computer related
inventions (CRIs), these requirements are considered as fulfilled if thespecification addresses the following:11"something for something" or "this for that" in Latin

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4.4.1 Fully and particularly (What):
1. If the patent application relates to apparatus/system/device i.e.
hardware based inventions, each and every feature of the invention
shall be described with suitable illustrative drawings. If theinvention relates to „method‟, the necessary sequence of steps shallclearly be described so as to distinguish the invention from the priorart with the help of the flowcharts and other information required
to perform the invention together with their modes/means of
implementation.
2. The working relationship of different components together withconnectivity shall be described.
3. The desired result/output or the outcome of the invention asenvisaged in the specification and of any intermediate applicable
components/steps shall be clearly described.
4.4.2 Best Method of performing the invention (How):The best mode of performing and/or use of the invention shall be
described with suitable illustrations. The specification should not limit
the description of the invention only to its functionality rather it should
specifically and clearly describe the implementation of the invention.
4.4.3 Claims:
1. The claims should clearly define the scope of the invention andshould take care of unity of invention requirements as defined
under section 10(5) of the Patents Act, 1970.
2. The claim(s) of a complete specification should be clear andsuccinct and should be fairly based on the matter disclosed in thespecification.
3. The claims in the field of Computer related inventions need to beconstrued to ascertain the substance of the claim without wholly
relying on the forms and types of the claims.
4.4.4 Form and substance:
The sub-section 3(k) excludes a mathematical or business method or acomputer programme per se or algorithms from patentability. While thePage 13 of 18

judgment of mathematical methods or business methods iscomparatively easier, it is the computer programme per se oralgorithms related inventions that require careful consideration of theexaminer. Computer programmes are often claimed in the form of
method claims or system claims with some „means‟ indicating thefunctions of flow charts or process steps. The algorithm related claims
are even wider than the computer programmes claimed by themselves
as a single algorithm can be implemented through different
programmes in different computer languages. If, in substance, claims
in any form such as method/process, apparatus/system/device,computer program product/ computer readable medium belong to thesaid excluded categories, they would not be patentable.
Even when the issue is related to hardware/software relation, theexpression of the functionality as a „method‟ is to be judged on its
substance. It is well-established that, in patentability cases, the focus
should be on the underlying substance of the invention, not theparticular form in which it is claimed. The Patents Act clearly excludes
computer programmes per se and the exclusion should not be allowed
to be avoided merely by camouflaging the substance of the claim by its
wording.

4.4.5 Means plus Function:
The claims concerning CRIs are often phrased in means for performingsome function such as means for converting digital to analog signal
etc. These types of claims are termed as means +function format. The„means‟ mentioned in the claims shall clearly be defined with the helpof physical constructional features and their reference numerals toenhance the intelligibility of the claims. The claims in means plus
function form shall not be allowed if the structural features of thosemeans are not disclosed in the specification.
Further, if the specification supports performing 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 programme
per se.
Where no structural features of those means are disclosed in thespecification and specification supports performing the invention solely
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by the software then in that case means in the “means plus function”
claims are nothing but software.
4.5

Determination of excluded subject matter relating to CRIs:
Since patents are granted to inventions, whether products or processes, in all
fields of technology, it is important to ascertain from the nature of theclaimed Computer-related invention whether it is of a technical nature
involving technical advancement as compared to the existing knowledge or
having economic significance or both, and is not subject to exclusion under
Section 3 of the Patents Act.
The sub-section 3(k) excludes mathematical methods or business methods orcomputer 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 orprocess steps. It is well-established that, while establishing patentability, thefocus should be on the underlying substance of the invention and not on theparticular form in which it is claimed.
What is important is to judge the substance of claims taking whole of theclaim together. If any claim in any form such as method/process,apparatus/system/device, computer program product/ computer readable
medium falls under the said excluded categories, such a claim would not bepatentable. However, if in substance, the claim, taken as whole, does not fallin any of the excluded categories, the patent should not be denied.
Hence, along with determining the merit of invention as envisaged under
Sections 2(1) (j), (ja) and (ac), the examiner should also determine whether
or not they are patentable inventions under Section 3 of the Act.

4.5.1 Claims directed as “Mathematical Method”: Mathematical methods
are a particular example of the principle that purely abstract or intellectual
methods are not patentable. Mathematical methods like method of
calculation, formulation of equations, finding square roots, cube roots andall other similar acts of mental skill are therefore, not patentable. Similarly
mere manipulations of abstract idea or solving purely mathematicalproblem/equations without specifying a practical application also attractthe exclusion under this category.

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However, mere presence of a mathematical formula in a claim, to clearlyspecify the scope of protection being sought in an invention, may notnecessarily render it to be a “mathematical method” claim. Also, suchexclusions may not apply to inventions that include mathematical formulaeand resulting in systems for encoding, reducing noise in communications/electrical/electronic systems or encrypting/ decrypting electronic
communications.

4.5.2 Claims directed as “Business Method”: The term „Business Methods‟
involves whole gamut of activities in a commercial or industrial enterprise
relating to transaction of goods or services. The claims drafted not directly
as “business methods” but apparently with some unspecified means areheld non-patentable. However, if the claimed subject matter specifies anapparatus and/or a technical process for carrying out the invention evenpartly, the claims shall be examined as a whole. When a claim is “businessmethods” in substance, it is not to be considered a patentable subject
matter.
However, mere presence of the words such as “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”, but if the subject matter isessentially about carrying out business/ trade/ financial activity/ transaction
and/or a method of buying/selling goods through web (e.g. providing web
service functionality), the same should be treated as business method andshall not be patentable.

4.5.3 Claims directed as “Algorithm”: Algorithms in all forms including but
not limited to, a set of rules or procedures or any sequence of steps or any
method expressed by way of a finite list of defined instructions, whether forsolving a problem or otherwise, and whether employing a logical,
arithmetical or computational method, recursive or otherwise, are excluded
from patentability.
4.5.4 Claims directed as “Computer Programme per se”: Claims which are
directed towards computer programs per se are excluded from patentability,
like,

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(i) Claims directed at computer programmes/ set of instructions/ Routines
and/or Sub-routines.
(ii) Claims directed at “computer programme products” / “Storage Medium
having instructions” / “Database” / “Computer Memory with instruction”
stored in a computer readable medium.
The legislative intent to attach suffix per se to computer programme isevident by the following view expressed by the Joint Parliamentary
Committee while introducing Patents (Amendments) Act, 2002:“In the new proposed clause (k) the words ''per se" have been
inserted. This change has been proposed because sometimes thecomputer programme may include certain other things, ancillary
thereto or developed thereon. The intention here is not to reject themfor grant of patent if they are inventions. However, the computer
programmes as such are not intended to be granted patent. This
amendment has been proposed to clarify the purpose.” 12

4.5.5 A literary, dramatic, musical or artistic work or any other aesthetic

creation whatsoever
television productions

includingcinematographic

works

and

The above criterion is to be judged as per the procedures as laid out inchapter 08.03.05.11 of the Manual.
4.5.6 A mere scheme or rule or method of performing mental act(s) or amethod of playing game(s)The above criterion is to be judged as per the procedures as laid out inchapter 08.03.05.12 of the Manual.
4.5.7 Presentation of information
The above criterion is to be judged as per the procedures as laid out inchapter 08.03.05.13 of the Manual.

12th

Report of the Joint Committee presented to the Rajya Sabha on 19 December, 2001 and laid on the table of Lok Sabhathon 19 December 2001

Page 17 of 18

4.5.8 Topography of integrated circuits
The above criterion is to be judged as per the procedures as laid out inchapter 08.03.05.14 of the Manual.

5. Replacement of Provisions of Manual
Chapter 08.03.05.10 of the Manual, containing provisions pertaining to section
3(k) of the Patents Act, 1970 shall stand deleted with coming into force of these
Guidelines for examination of CRIs.

6. Applicability of Guidelines:
These Guidelines shall be applicable with immediate effect.

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