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2017.07.24
特許・実案 アジア・新興国 法律・規則・基準改正
【インド】 コンピュータ関連発明の審査ガイドライン

 インド特許庁は、2017年6月30日に2017年度版のコンピュータ関連発明の審査ガイドラインを公表した。

■2016年度版の審査ガイドラインからの変更点について

(1)「Tests/Indicators to determine Patentability of CRIs」が削除された。

(2)特許性がないと判断されるコンピュータ関連発明の例の記載が削除された。

 

<インド特許庁HPからダウンロード可能>

http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/Revised__Guidelines_for_Examination_of_Computer-related_Inventions_CRI__.pdf

 

■2016年度版の審査ガイドラインと2017年度版の審査ガイドラインの対照表

Sl. No.

ITEMS

CRI GL 2016

CRI GL 2017

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 these system/device/ apparatus claims are worded in such a way that they merely and only comprise of a memory which stores instructions to execute the previously claimed method and a processor to execute these instructions, then this set of claims claiming a system/device /apparatus may be deemed as conventional and may not fulfil the eligibility criteria of patentability.

 

If, however, the invention relates to ‘method’, the necessary sequence of steps should clearly be described so as to distinguish the invention from the prior art 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 with connectivity shall be described.

 

3. The desired result/output or the outcome of the invention as envisaged in the specification and of any intermediate applicable components/steps shall be clearly described.

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 the invention relates to “method”, the necessary sequence of steps shall clearly be described so as to distinguish the invention from the prior art 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 with connectivity shall be described.

 

3. The desired result/output or the outcome of the invention as envisaged in the specification and of any intermediate applicable components/steps shall be clearly described.

4.4.4

Form and substance:

The sub-section 3(k) excludes mathematical methods or business methods or computer programme per se or algorithms from patentability.

 

While the judgment of mathematical methods or business methods is comparatively easier, it is the computer programme per se or algorithms related inventions that require careful consideration of the examiner. 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 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 the said excluded categories, they would not be patentable.

 

Even when the issue is related to hardware/ software relation, (e.g., when the claims recite ‘processor is programmed to… or ‘apparatus comprising a processor and configured / programmed to…..) the expression of the functionality as a ‘method’, is judged on its substance. It is well established that, in patentability cases, the focus should be on the underlying substance of the invention, not the particular 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 wording (e.g. different subroutines are performed in different physical locations such as processors will not suffice).

The sub-section 3(k) excludes a mathematical or business method or a computer programme per se or algorithms from patentability. While the judgment of mathematical methods or business methods is comparatively easier, it is the computer programme per se or algorithms related inventions that require careful consideration of the examiner. Computer programmes are often claimed in the form of method claims or system claims with some “means” indicating the functions 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 the said excluded categories, they would not be patentable.

 

Even when the issue is related to hardware/ software relation, the expression 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 the particular 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.

4.5

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 the claimed CRI 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 or computer 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 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 claims together. If the claims in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium fall under the said excluded categories, they would not be patentable. However, if in substance, the claims, taken as whole, do not fall in any of the excluded categories, the patent should not be denied.

Since patents are granted to inventions, whether products or processes, in all fields of technology, it is important to ascertain 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.

 

The sub-section 3(k) excludes mathematical methods or business methods or computer 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 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 be patentable. However, if in substance, the claim, taken as whole, does not fall in 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 at “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 and all other similar methods are therefore not patentable. However, mere presence of a mathematical formula in a claim, to clearly specify the scope of protection being sought in an invention, may not necessarily render it to be a “mathematical method” claim.

 

Some examples which will attract exclusion:

 

a)  acts of mental skill. e.g. A method of calculation, formulation of equations, finding square roots, cube roots and all other methods directly involving mathematical methods like solving advanced equations of mathematics.

 

b) merely manipulates abstract idea or solves a purely mathematical problem without specifying a practical application.

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 and all other similar acts of mental skill are therefore, not patentable. Similarly mere manipulations of abstract idea or solving purely mathematical problem/ equations without specifying a practical application also attract the exclusion under this category.

 

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

5

5.1

 

Tests/Indicators to determine Patentability of CRIs:

 

Examiners may rely on the following three stage test in examining CRI applications:

 

(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.

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

 

6.1

 

Illustrative examples of Claims which are not patentable

Applicability of Guidelines:

 

These Guidelines shall be applicable with immediate effect.

 

 

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