Software patent application drafting practices post-CRI examination guidelines

Drafting a patent application, including the claims and specification, is generally considered to be an art rather than a skill because no set guidelines govern the process. The attorneys involved, especially in big organisations, often prepare their own internal practices for drafting. Such practices evolve alongside the patent law in terms of legislation, case law, manuals and guidelines. This report outlines preferred practices for drafting software patent applications in view of a guideline for examining patent applications related to computer-related inventions (CRIs) published by the Indian Patent Office.

Patent applications for CRIs contain process claims and product claims. In product claims it is common to have claims that are structured as:

• computer readable media;
• processor and memory;
• mean plus function; and
• units and modules.

Thus, the specification for CRIs should provide a specific and clear description of the process and product claims – the specification should unambiguously describe the implementation of the invention and enable a person skilled in the art to perform and use the invention described therein. This requirement of describing the invention unambiguously in a specification is common to patent laws of various jurisdictions.

Process claims, as is common in various jurisdictions, are generally described using various figures such as flowcharts and data flow diagrams. The figures depicting the process claims may be detailed and provide literal support for the claims. In addition, the description of process claims can provide the result or outcome of the invention.

In regard to product claims, a layered approach can be used while describing them. In other words, different specifications of the product claims can be presented in a top-down manner using multiple figures in accordance with the structure of the claims. This top-down approach can assist in providing an overall architecture of the product or system implementing the invention. In addition, the top-down approach can help to overcome prior arts or make it easier to insert further elements in claims in light of prior arts during examination.

Accordingly, the description of product claims can begin by describing various units claimed in the product claims. The units can also be described as being different from the processor and memory, which also form a part of the product. Subsequently, implementation of the invention by the units can be described along with a working relationship between the units. In addition, the description can provide the result or outcome of the invention.Thereafter, different implementations of the units can be described. For example:

• an implementation where the units are software;
• an implementation where the units are hardware;
• an implementation where one of the units is part of the processor;
• an implementation where two of the units are part of the processor; and
• an implementation where all of the units are part of the processor.

These different implementations allow for claims to be amended for different jurisdictions.

Further, as is common in various jurisdictions, the description can provide an exhaustive list of examples, literal support, references from figures or hardware alternatives for means in means plus function claims. However, not all types of product claim are allowed in India – for example, CRM claims, data structure claims and signal claims. Thus, a description of such claims may not need to be presented in the specification. 

Further, it is not mandatory to set technical problem for many types of inventions, but the same is often required for CRIs during examination in India. Therefore, it is suggested to include the technical problem in the specification for the CRI in addition to enumerating disadvantages of state of the art solutions.

Further, the specification for CRIs can be structured in any manner – it can first describe the product claims and then the process claims, or vice versa. Nevertheless, it is suggested that the description of process claims be provided in an independent manner – that is, the description of the specification can begin by describing the process claims. Subsequently, the product claims can be described in relation to the process claims. This approach effectively ties the product claims to the process claims. Further, Indian examiners generally ask to insert hardware or structural features in the process claims. Thus, it is easier to insert structural features from the product claims into the process claims when the product claims are effectively tied to the process claims.

Finally, even though the structure of claims presented for examination can be different in different jurisdictions, the specification largely remains same. Moreover, opportunities to amend the claims are available during examination and enforcement, whereas the opportunities to amend the specification are limited. Thus, it is wise to provide as elaborate a description of the claims as possible in the specification of the CRI or software patent applications, in order for the specification to provide much-needed support during the examination and later on.