In the light of the above observations by courts, the following points are required to be taken into consideration while drafting applications for software-related inventions:
● Structural hardware features: Firstly, it is essential to ensure that hardware limitations are clearly illustrated in the description, claims and the drawings of the patent application. Further, during prosecution of the patent application, it is necessary to highlight to the Controller the hardware limitations included in the patent application.
● Solves a technical problem with a technical solution: It is pertinent to note that “technical problem” literally means solving a problem which is technical in nature. Solving a problem which is non-technical in nature by providing a technical solution will not qualify the claimed invention as a patentable subject matter. In particular, IPAB in Yahoo Inc v. Assistant Controller of Patents and Designs, held that “the claimed ‘invention’ “is nothing but doing the advertisement business electronically. Even the technical advance that is claimed over the existing art is only an improvement in the method of doing business and S.3(k) is clear that business method cannot be patented, the fact that there is an advance has not improved the case”. In other words, providing a technical solution such as mere automation of an existing business practice being a non-technical problem, will not form a patentable subject matter.
Further, it is also important to note that the technical solution as claimed in the patent application should highlight steps which are unconventional/significantly different in nature from the steps generally carried out by a generic computer.
● Technical advancement over existing prior art: If the above parameter of the invention solving a technical problem with a technical solution is satisfied, then it is imperative that the invention is technically advanced over the existing prior art. In particular, if none of the existing prior art considered alone or in combination disclose the features of the claimed invention, then the claimed invention is said to be technically advanced.
● Real world technical effect: As discussed above, technical effect is the desired end result which could be derived from the claimed invention. It is more specifically termed as “real world technical effect” since the claimed invention should cater to a real world practical application.
Source: Barandbench
