Can you patent an invention in India, even if it includes an algorithm or a computer program?

The increase of computer-related inventions in the field of information technology, telecommunication, computer&internet, deep technology, AI, ML, IoT etc., attract the protection of such inventions. However, The Indian Patents Act, 1970 introduced exclusion from Patentability under Section 3 for the computer-related inventions, if it is related to a mathematical or business method or computer program per se or algorithms.

The term “algorithm” is not defined in Indian statutes and hence, for interpretation of this term, the general dictionary meaning is being used.

The Oxford Advanced Learners Dictionary defines “algorithm” as “a set of rules that must be followed when solving a particular problem".

The term “computer program” has been defined in the Copyright Act 1957 under Section2(ffc) as "computer program" means “a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result;”

However, the recent CRI guidelines issued by the Indian Patent Office regarding the examination procedure of computer related-inventions have brought in a rather interesting turn of events that allows patenting of such inventions even if it falls under a fore mentioned categories. The guidelines state that:

“since Patents are granted to inventions, whether products or processes, in all fields of technology, it is important to as certain from the nature of the claimed 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.”

Further, it states that “Computer programs are often claimed in the form of algorithms as method claims or system claims with some “means‟ indicating the functions of flow charts or process steps. It is well-established that, while establishing patentability, the focus should be on the underlying substance of the invention and not on the particular form in which it is claimed. What is important is to judge the substance of claims taking whole of the claim 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 fall in any of the excluded categories, the patent should not be denied.

It is important to pay special attention while drafting Claims relating to computer-related inventions. CRI guidelines state that Computer programs are often claimed in the form of algorithms as a method claim/system claim with some “means” indicating the functions of flow charts or process steps. Thus, it is important to highlight the means with its functions in a technical manner. The focus should not be only on the algorithm part, the focus should also be on the means plus function part. So, when the examiner examines the claims, he takes the claim as a whole and examines the whole claim and construe the underlying substance of the invention and not on the particular form in which it is claimed.

In the recent judgment passed by the High Court of Delhi on 12th December 2019 in the case of Ferid Allani Vs. Union of India iterated that not all computer programs are hit by the bar under Section 3(k) of the Patents Act as when such programs demonstrate a 'technical effect' or a 'technical contribution', they are patentable.

As far as Section 3(k) was concerned, the Court stated that the bar on patenting was in respect of `computer programs per se….’ and not on all inventions which were based on computer programs.Remarking that it was the effect of the computer programs which constituted the test of patentability, the Hon’ble Court observed,

“In today’s digital world, when most inventions are based on computer programs, it would be retrograde to argue that all such inventions would not be patentable. Innovation in the field of artificial intelligence, blockchain technologies and other digital products would be based on computer programs, however the same would not become non patentable inventions – simply for that reason. It is rare to see a product which is not based on a computer program. Whether they are cars and other automobiles, microwave ovens, washing machines, refrigerators, they all have some sort of computer programs in-built in them. Thus, the effect that such programs produce including in digital and electronic products is crucial in determining the test of patentability.”

Further, in the case, “technical effect” and “technical advancement” were also discussed,the Draft Guidelines forExamination of Computer Related Inventions, 2013 which define “technicaleffect” and “technical advancement” as under:

“Technical Effect”

It is defined for the purpose of these guidelines assolution to a technical problem, which the invention taken as a whole, tends to overcome. A few generalexamples of technical effect are as follows:

  • Higher speed
  • Reduced hard-disk access time
  • More economical use of memory
  • More efficient data base search strategy
  • More effective data compression techniques
  • Improved user interface
  • Better control of robotic arm
  • Improved reception/transmission of a radio signal

“Technical advancement”

It is defined for the purpose of these guidelines as contribution to the state of art in any field of technology. It is important to divide between software, which has a technical outcome, and that which doesn’t while assessing technical advance of the invention. Technical advancement comes with technical effect but all technical effects may or may not result intechnical advancement.

Therefore, from the above discussion, it can be concluded that Patent applications in these fields should be examined to see if they result in a “technical contribution”. If the invention demonstrates a ‘technical effect’ or a ‘technical contribution’ it is patentable even though it may be based on a computer program.

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