The patentability requirements for Computer Related Inventions (CRIs) under Indian Patent Law have been unclear. It is generally understood that a CRI must demonstrate “technical effect” and the relevant claims must have “machine limitation”, in addition to the basic patentability requirements of novelty, inventive step, and industrial applicability. However, the phrase “technical effect” has not been defined properly. Further, the legal basis for technical effect requirement has not been clarified.
The guidelines for examination of CRIs published recently by the Indian Patent Office is an important step towards making the requirements clearer. In this short note, we explore a set of definitions provided in the guidelines to gain insight into how the requirement of “technical effect” can be read from the law, as interpreted in the guidelines.
Section 2(1)(j) of the patent act defines an invention as a new product or process involving an inventive step and capable of industrial application.
While the basic patentability requirements as laid out in Section2(1)(j) do not specifically require an invention to be technological in nature, the intention of the law was to provide protection to technological inventions (meaning inventions relating to machines). In the context of CRIs, the guidelines clarify the inventive step requirement in section 5.2 by defining it as a feature of an invention that involves technical advance (or technical advancement). Further, section 5.4.2 of the guidelines interprets the inventive step requirement to encompass the “technical advancement” requirement. Therefore, the inventive step requirement can be read as including the “technical advancement” requirement.
Further, in defining technical advancement in section 3.16, the guidelines state that technical effect (as defined in section 3.15 of the guidelines) is essential for technical advancement. Sections 3.16 and 3.15 are quoted hereunder for the benefit of the readers:
Section 3.16 – 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 in technical advancement.”
Section 3.15 – Technical Effect
“It is defined for the purpose of these guidelines as solution to a technical problem, which the invention taken as a whole, tends to overcome. A few general examples 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”
Given the definitions, it can be said that “technical effect” requirement is a result of “technical advancement” requirement, and “technical advancement” requirement is a result of “inventive step” requirement. Therefore, as interpreted by the guidelines, “technical effect” requirement is a part of the fundamental requirement of “inventive step”.
The “technical effect” requirement cannot literally be read from the law. It remains a guideline. However, given that there has been no jurisprudence on this topic, it is prudent for a practitioner to treat the guideline as the law till there is more clarity on the requirement.
By, Arun Narasani, Founder/CEO