On March 25, 2025, the Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM) published a draft on Revised Guidelines for Examination of Computer Related Inventions (CRIs) on the website of Indian Patent Office, and invited stakeholders and the public to provide their comments and suggestions by sending an email to sukanya.ipo@nic.in by April 15, 2025.
The draft guidelines are designed to address regulatory challenges in evaluating Intellectual Property Rights (IPRs) concerning emerging technologies in the field of Information and Communication Technology.
While Artificial Intelligence (AI) has been garnering attention from all sectors, several such technologies from the field of Information and Communication Technology are also being rapidly invented and materialized. Further, these technologies are being integrated into various sectors such as healthcare, education, security and finance.
As we embrace new inventions, the CGPDTM, as a committed regulatory authority for IPRs, has consistently made efforts to enhance regulatory procedures, such as examination guidelines, to align with cutting-edge innovations, ensuring a sustainable and secure process. It was in 2017 that an updated version of the CRI guidelines came into effect. Therefore, it is a welcome approach that the CGPDTM has now introduced the Draft of the latest CRI guidelines.
Considering the evolving innovations and recent case laws in the relevant field, the draft guidelines have been amended to facilitate a clearer understanding of the exclusions under Section 3(k) of the Patents Act, 1970 (as amended), thereby aiming to enhance the efficiency of examining patent applications related to CRIs.
The draft guidelines incorporate more elaborative definitions for the following terms:
Algorithm: “...An algorithm may be defined as a set of rules or instructions for solving a problem, typically through a sequence of steps or operations. Devising an algorithm would also, therefore, be an intellectual exercise and intellectual property protection would be limited to copyright protection, subject to originality, for the form of expression. While the expression is commonly used in the context of software-based routines in computers, as is evident from the above, it can be used in other contexts...” citing Microsoft Technology Licensing LLC vs Assistant Controller of Patents and Designs (July 3, 2024)
Per se - “of, in, or by itself, standing alone, without reference to additional facts, this phrase denotes that something is being considered alone, and not with other collected things...” citing Microsoft Technology Licensing LLC vs Assistant Controller of Patents and Designs (2024)
A New term has been introduced:
“Secure System”, as per the Information Technology Act, 2000, has been defined as: “Secure system means computer hardware, software, and procedure that— (a) are reasonably secure from unauthorised access and misuse; (b) provide a reasonable level of reliability and correct operation; (c) are reasonably suited to performing the intended functions, and (d) adhere to generally accepted security procedures."
Judicial precedents play a crucial role in interpreting the scope, meaning and legislative intent of the provisions of Section 3(k) of the Indian Patents Act, 1970, as established by the Hon'ble courts in recent decisions.
The following tables illustrate the case laws that are cited for interpreting Section 3(k) of the Indian Patents Act:
The draft guidelines provide that the determination of novelty in respect of CRIs shall be no different from any other field of invention. However, it has also cited the judicial precedent of Telefonktiebolaget Lm Ericsson (Publ) vs Lava International Ltd, wherein the Hon'ble Delhi High Court has proposed a ’Seven Stambhas Approach’ for evaluating the novelty of an invention, which are:
i. Understanding of the Claims of the Invention
ii. Identify Relevant Prior Art
iii. Analyse the Prior Art
iv. Determine Explicit and Implicit Disclosures
v. Assessment of material differences while considering the entire scope of the Claims
vi. Verifying Novelty in light of Comprehensive Scope and Specific Combination of Claimed Elements
vii. Documentation of the Analysis and Novelty Determination
The guidelines remain unchanged with respect to the inventive step and industrial applicability.
Concerning the best method of performing the invention, the draft guidelines have incorporated the Hon'ble Madras High Court's statement in the matter of Caleb Suresh Motupalli vs Controller Of Patents [C.M.A. (PT) No. 2 of 2024], which emphasizes that, in case of Computer Related Inventions, the disclosure requirements are critical and need to be specific and particular to the invention so that the AI model's functionality is reproducible. The draft guidelines include specific examples of different types of AI-related inventions and specific information that must be disclosed to comply with the enablement requirement.
The draft guidelines also highlight that while establishing the novelty, the focus should be on the underlying substance of the invention and not on the form in which it is claimed. The substance of the claims must be judged by taking the whole of the claim together.
The draft guidelines also provide an interpretation of the Section 3(k) from the findings of the Court:-
“Mathematical Method” - Microsoft Technology Licensing LLC vs Assistant Controller of Patents and Designs: "Mathematical method exclusion is intended to exclude the mere expression of an intellectual exercise, such as a method of calculation, the formulation of equations and the like. By way of illustration, Brent's method in numerical analysis to find the root or the Adams’ method of solving differential equations would be excluded. Said Guidelines also clarify - again, correctly - that the mere presence of a mathematical formula in a claim would not necessarily render it ’a mathematical method’ claim ...”
“Business Method” - Opentv Inc vs The Controller of Patents And Designs:
- “The bar in India to grant of business method patents has to be read as an absolute bar without analysing issues relating to technical effect, implementation, technical advancement or technical contribution...”
- Non patentable subject matter includes enablement of conduct or administration of a particular business, that is, sale or purchase of goods or services, manner of doing business, or method of sale or purchase of goods or services etc.
“Algorithm” - Microsoft Technology Licensing LLC vs Assistant Controller of Patents and designs; Blackberry Limited vs Assistant Controller Of Patents And Designs
- A pure algorithm is not patentable under Indian Patents Act, 1970
- Inventive feature of an invention is the implementation of the algorithm and not the algorithm itself
“Computer Programme per se” - Ferid Allani vs. Union Of India & Ors; Microsoft Technology Licensing, Llc vs The Assistant Controller of Patents and Designs: “If the subject matter is implemented on a general-purpose computer, but results in a technical effect that improves the computer system's functionality and effectiveness, the claimed invention cannot be rejected on non-patentability as “computer program per se...“.
Based on the interpretations of the Hon'ble Courts, a non-exhaustive list of possible technical effect(s) has been incorporated. An invention shall be considered to have “technical effect” if it showcases:
Higher speed
Reduced hard-disk/ memory access time
Better control of robotic arm
Improved reception/ transmission of a radio /electromagnetic/ communication signal
Real-time monitoring and control of devices leading to technical solution to a technical problem
Security enhancement in computer networks/system
Image Processing/ Signal Processing to solve a technical problem
As an attempt to explain the provisions, the guidelines now include some examples for patentable claims and non-patentable claims in case of CRIs.
The ever-progressing Information technology has introduced several promising technologies. CGPDTM has contributed by revising the guidelines to be in par with the latest standards. These draft guidelines are a commendable effort by the Indian Patent office to refine framework for patentable inventions in algorithm-driven technologies, reduce ambiguities in patent examination, and contribute to a more robust IP ecosystem by identifying the technological advancements in this field.
About the authors: Vikrant Rana is the Managing Partner of SS Rana & Co. Renu Bala Rampal is an Associate Partner at the Firm.
Shanmuhapreya, Patent Agent at S.S. Rana & Co. has assisted in the research of this article.
Disclaimer: The opinions expressed in this article are those of the author(s). The opinions presented do not necessarily reflect the views of Bar & Bench.
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