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A CRITICAL ANALYSIS OF PATENTABILITY OF SOFTWARES UNDER INDIAN PATENTS ACT 1970
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CRITICAL ANALYSIS OF PATENTABILITY OF SOFTWARES UNDER INDIAN PATENTS ACT 1970
AUTHORED BY - SHASHANK B V || 3rd
Year || 5 BA LLB ‘B’
School of Law Christ (Deemed to be)
University
Abstract
The fact that software is
a type of code should not exclude it from being eligible for patent protection,
especially in today's internet-driven era where much innovation is based on
software. Therefore, it is crucial to patent software to encourage and protect
technological advancements. While India was the first country to provide legal
protection for software, it has fallen behind in the area of software
patenting. This passage discusses software patentability in India and the
United States and the TRIPS Agreement. The Indian Patents Act of 1970 excludes
"computer programs" from patentability, but software-related
inventions can still qualify for patent protection if they have a technical
impact or resolve a technical issue. The Copyright Act of 1957 also provides
protection for software. The TRIPS Agreement states that patents shall be
available for any inventions, whether products or processes, in all fields of
technology, provided that they are new, involve an inventive step, and are
capable of industrial application. However, each member country of the WTO has
the flexibility to decide whether or not to allow software patents within its
domestic laws and regulations, as long as it complies with the general
principles set forth in the TRIPS Agreement. In the United States, software
patents are allowed if the invention is novel, non-obvious, and has some
practical application, but abstract ideas implemented on a computer are not
eligible for patent protection. This article explains the way the courts have granted
patents to software through various case laws and provides for better
understanding of the current scenario of software patentability in India.
Research problem
In India the Copyright
Act, 1957 grants protection to original expression and computer software is
granted protection as a copyright unless it leads to a technical effect and is
not a computer program per se. The computer software which has a technical effect
is patentable under India Patent Act, 1970. However, Section 3(k) of the Indian
Patents Act 1970 excludes "mathematical or
business method or a computer program per se or algorithms" from
patentability, which has created an impact on
innovation and entrepreneurship and has led to controversy and uncertainty over
the years, particularly in the software industry.
Claim Statement
It is contended there is
an ambiguity in Section 3(k) of the Indian Patents Act which excludes "mathematical or business method or a computer program per
se or algorithms" from patentability, regarding software patents that has led to different
interpretations by judges which has created an impact on innovation and entrepreneurship and has
led to controversy and uncertainty over the years.
Research Question
How does the exclusion of
"mathematical or business method or a computer program per se or
algorithms" from patentability under Section 3(k) of the Indian Patents
Act 1970 affect the protection of Computer software in India?
Research
Methodology
The paper mainly follows
the doctrinal research methodology, wherein the Research is based on Legal
Statutes, Judicial decisions, journal reports, articles and other similar
sources of information. The paper mainly gives a legal analysis in order to
identify the problems and solutions to it but is not completely limited to the
above-mentioned source.
Research Objective
The main objective of
this paper is to critically analyse the grant and protection of software
patents under Indian Patents Act 1970. This paper also aims to analyse the
problems that have been caused by the inclusion of Section 3(k) into the Act
which excludes "mathematical or business method or a computer program per
se or algorithms" from patentability, regarding software patents that has
led to a never-ending debate whether or not software can be patentable.
Introduction
Software has
progressively merged into our daily lives on an indispensable level. In
practically every gadget we use, from smartphones to cars, software is
essential. A global discussion concerning whether software is eligible for
patent protection has arisen as a result of the emergence of software and its
significance in our everyday lives. Softwares are those sets of instructions,
data, or algorithms which operate the computer system and carry out specific
tasks. Thus, the websites we visit or the computer application we download are
all classes of software. Software patents ensure the owners their property
right that protects computer programs or any performance from that computer.
Unlike software copyright, which ensures protection for only the code of the
program, a software patent ensures protection not only for the code but also
for the methods, performance, and output of the program. As tempting and
powerful as it sounds to obtain a software patent license, the reality is
vastly different. There has been a never-ending debate on the topic that
whether or not the software can be patentable. Due to this, there has been an
ambiguity regarding the provision and has left owners confused or cautious to
approach one. In this paper, we will discuss how software patentability is
enforced under various jurisdictions.
Software Patents in India
The Indian Patents Act of
1970 stipulates that innovations that meet specific conditions are eligible for
patent protection in India. The contemporary economy cannot function without
patents, which shield inventors from lawsuits and promote spending on Research
and development. According to the act, software is considered a "computer
program" and can be protected if it meets the criteria of being novel,
non-obvious, and having an industrial application. Section 3(k) of the Indian
Patents Act, 1970, specifically excludes "computer programs" from
patentability. However, there have been instances where software-related
inventions have been granted patents by the Indian Patent Office.
A computer programme
alone is not patentable under the Patents Act. However, the computer programme
can qualify for patent protection if it has a technical impact, resolves a
technical issue, or enhances a technical procedure. For instance, software may
qualify for patent protection if it is connected to a cutting-edge piece of
hardware or a business method. The Copyright Act of 1957 also provides
protection for software in addition to patent protection. The Copyright Act
forbids the copying, dissemination, and reproduction of software without the
consent of the copyright holder and automatically protects the original
software code. Software may also be secured by trade secrets, which entails
keeping the functionality and source code of the software a secret from
outsiders. However, trade secrets are still not protected under Indian law.
In India, software or
computer algorithm patentability is limited by the Indian Patents Act 1970,
which excludes patentability for subject matters containing mathematical or
business methods, computer programmes per se, or algorithms. However, there is
still scope for software patentability in India. The 2017 guidelines issued by
the Office of the Controller General of Patents, Designs & Trademark state
that "The sub-section 3(k) excludes mathematical methods or business
methods or a 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.[1]
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." Therefore, if a claim falls under the excluded categories of
method/process, apparatus/system/device, or computer program
product/computer-readable medium, it would not be patentable. However, if the
claim, taken as a whole, does not fall under any of the excluded categories in
substance, the patent should not be denied.
TRIPS
The TRIPS (Trade-Related
Aspects of Intellectual Property Rights) Agreement, which is part of the World
Trade Organization (WTO) framework, sets out international standards for the
protection of intellectual property, including patents.
Article 27 of the TRIPS
Agreement deals with the patentability of inventions, including software. The
article states that patents shall be available for any inventions, whether
products or processes, in all fields of technology, provided that they are new,
involve an inventive step, and are capable of industrial application.[2]
Regarding software, the
article allows for the patenting of computer programs as long as they meet the
general criteria for patentability. However, the article also provides that
members may exclude from patentability inventions that are contrary to order
public or morality, including those that are harmful to human, animal, or plant
life or health, or that are prejudicial to nature or the environment.
In essence, TRIPS Article
27 establishes that software is not excluded from patentability, but it does
not mandate its patentability. This means that each member country of the WTO,
including India, has the flexibility to decide whether or not to allow software
patents within its domestic laws and regulations, as long as it complies with
the general principles set forth in the TRIPS Agreement.
US Position on Protection of Software Patents
In the United States, the
protection of software patents is based on the interpretation of patent law by
the US Patent and Trademark Office (USPTO) and the US courts. Generally,
software patents are allowed in the US if the invention is novel, non-obvious,
and has some practical application.
The US Supreme Court has
issued several landmark decisions regarding the patentability of software. In
the case of Alice Corp. v. CLS Bank International (2014), [3]the
Court held that abstract ideas implemented on a computer are not eligible for
patent protection. The Court clarified that a patent-eligible invention must
involve more than just implementing an abstract idea on a computer and that the
invention must be innovative and useful.
Following the Alice
decision, the USPTO issued guidelines for examining software patent
applications, which require examiners to evaluate whether the invention goes
beyond the mere implementation of an abstract idea and whether the invention
provides a specific technological solution to a problem.
However, there is still
ongoing debate about the scope of software patent protection in the US. Some
argue that software patents stifle innovation and that the USPTO and courts
need to apply stricter standards for granting software patents. Others argue
that software patents are necessary to incentivize innovation in the technology
industry.
Overall, the US stands in
a position where software patents are allowed but require a specific
technological solution to a problem and not just the implementation of an
abstract idea. The interpretation of these requirements and the scope of
software patent protection remains a subject of ongoing discussion and debate.
The position of the Indian judiciary
The Indian judiciary has
also grappled with the issue of the patentability of software. In the landmark
case of Tata Consultancy Services v. State of Andhra Pradesh (2004),[4]
the Indian Supreme Court held that computer software is not patentable if it
does not have any technical application. In the case of Infosys Technologies
Ltd. v. Assistant Controller of Patents & Designs (2014), the court held
that a computer program that merely implements a business or mathematical
method is not patentable.
Software patents were
mentioned by the Honourable Delhi High Court in the cases Ericsson v. Intex and
Ericsson v. Lava, [5]both of
which were recently decided. The order(s) states that "It should be noted
that merely referencing the use of a "procedure," "method,"
or "algorithm" in an apparatus that includes various network or
hardware elements, components, etc. in order to achieve a technical effect or
perform a technical process does not reduce/make the claimed invention an
algorithm or computer programme per se or even a mathematical method or formula
as contemplated under section 3(k)."[6]
The Court further
declared that when algorithms are used by hardware components to accomplish a
technical function, the 3(k) bar does not apply. The Court continued by stating
that the patents at issue were not computer programmes in and of themselves,
abstract algorithms, or mathematical procedures, and that, at least initially,
the inventions had produced an advance in technology and a real physical
representation.
However, in the case of
Ferid Allani v. Union of India (2018),[7]
the Delhi High Court held that a software patent can be granted if the
invention lies in the technical contribution of the software beyond the
exclusionary subject matter. The court clarified that software that
demonstrates a technical effect or solves a technical problem can be patented.
The Honourable Delhi High
Court stated in a more recent lawsuit that "... In today's digital age,
when the majority of inventions are based on computer programmes, it would be
regressive to suggest that all such ideas would not be patentable. Computer
programmes would form the foundation for innovation in the fields of artificial
intelligence, blockchain technology, and other digital goods, but they would
not simply cease to be patentable innovations for that reason. According to the
Court, "..The meaning of "technical effect" is no longer in
dispute due to the development of judicial precedents and patent office
practises internationally and in India.."
Similarly, in the case of
Yahoo v. Controller of Patents, the Intellectual Property Appellate Board
(IPAB) held that a software program, if it has a technical effect or solves a
technical problem, can be patentable.[8]
The IPAB also held that mere automation of a manual process does not make it
patentable.
In the case Intellectual
Property Attorney Association v. Controller General of Patents, Designs and
Trade Marks & Anr, decided in 2017 by the Delhi High Court[9],
the court struck down the guidelines issued by the Indian Patent Office in 2016
that allowed for the patenting of software. The court held that the guidelines
were contrary to the provisions of the Indian Patents Act and the previous
court decisions on this issue.
In the case Endurance
International Group Inc. v. Endurance Domain Technology, decided in 2019 by the
Bombay High Court, the court held that a computer program that improves the
functioning of a computer system can be patented. The court emphasized that the
patentability of software depends on the technical nature of the invention and
its contribution to the field of technology.
Overall, these cases show
that the Indian judiciary's stance on software patents is somewhat uncertain
and subject to ongoing debate and interpretation. While software per se is not
patentable in India, if it has a technical application and provides a technical
solution to a technical problem, it can be patented. However, the scope of
patentability of software is still being debated and clarified by the courts.
It appears that there is
still some ambiguity regarding the patentability of software in India, despite
the clarification provided by the CRI Guideline 2016. While the guideline
allows for patents on computer programs if they are "in conjunction with a
novel hardware," it does not provide a clear definition of what
constitutes "novel hardware." As a result, the question of whether a
software invention qualifies for patent protection remains open to
interpretation. Additionally, the CRI guidelines do not allow for the patenting
of mathematical or business programs, which are considered non-patentable
subject matter. However, it appears that there may be some inconsistency in the
Patent Office's approach to granting patents for software inventions that could
be considered business methods under section 3k of the Patent Act.
Overall, it is important
for inventors and businesses to carefully consider the patentability of their
software inventions and consult with legal experts to navigate the complex
landscape of intellectual property law in India.
Conclusion
In conclusion, the
patentability of software under section 3(k) of the Indian Patents Act 1970 is
a complex and contentious issue. While the IPO and the Indian judiciary have
provided some guidance on this issue, there is still significant uncertainty
about what types of software are patentable. The Indian government may need to
clarify the law on this issue to provide greater certainty to innovators and to
encourage investment in research and development. In India, computer software
can be protected under copyright law, but there is still some uncertainty about
how much protection it offers to different parts of the program, the author's
rights, and the concept of fair use under licensing agreements. Software can
also be eligible for patent protection, as long as it is not considered a
"software per se". However, there is no clear guidance or legal
precedent on when software crosses the threshold from "software per
se" to being eligible for patent protection. Patents encourage innovation
by disclosing information and providing legal protection for inventors. They
also promote transparency and prevent larger companies from stealing ideas from
smaller companies. However, Section 3k of the Indian Patent Act is often
criticized for its ambiguous language regarding software patents, which can
lead to different interpretations by judges. This
can benefit large companies but harm others. Additionally, patents can
sometimes hinder technological progress and lead to monopolies. While the CRI
guidelines are helpful, the law should be stricter in regulating the software
patent controversy.
[1] LexCampus.
(n.d.). Patentability of Computer Related Inventions. Retrieved from
https://www.lexcampus.in/patentability-of-computer-related-inventions/
[2] Dwivedi,
D. 2015. “Trips Agreement And Protection Of New Plant Varieties: Issues And
Implications For Agricultural Sector In India.” Vidhigya 10 (1): 1.
[3] Mondaq.
(2018, July 6). Case Analysis: Alice Corp. v. CLS Bank, 134 S. Ct. 2347 (2014).
Retrieved from
https://www.mondaq.com/india/patent/731008/case-analysis-alice-corp-v-cls-bank-134-s-ct-2347-2014
[4] ITATOnline.
(n.d.). Tata Consultancy Services v. State of AP [2004] 271 ITR 401 [192 CTR
257] [141 Taxman 132] 137 STC 620. Retrieved, from
https://itatonline.org/digest/tata-consultancy-services-v-state-of-ap-2004-271-itr-401-192-ctr-257-141-taxman-132-137-stc-620sc-2005-1-scc-308-sc-air-2005-sc-371/
[5] SpicyIP.
(2016, July 22). Ericsson v. Lava: Delhi HC passes interim injunction for Lava
to stop manufacture and sale. Retrieved April , from https://spicyip.com/2016/07/ericsson-v-lava-delhi-hc-passes-interim-injunction-for-lava-to-stop-manufacture-and-sale.html
[6] India’s
Information Technology Industry: A Tale of Two Halves - Springer.
https://link.springer.com/chapter/10.1007/978-981-13-8102-7_5
[7] IPR
Law India. (2019, December 12). Ferid Allani v. Union of India Decided on 12th
December 2019. Retrieved , from https://iprlawindia.org/ferid-allani-v-union-of-india-decided-on-12th-december-2019/
[8] In
brief: patent prosecution in India - Lexology. https://www.lexology.com/library/detail.aspx?g=6c8faaab-0abb-4c30-bce2-70c70aaf4a8e
[9] IPleaders
Blog. (2021, March 1). Intellectual Property Attorneys Association v. The
Controller General of Patents, Designs, Trade Marks & Anr. Retrieved, from
https://blog.ipleaders.in/intellectual-property-attorneys-association-v-the-controller-general-of-patents-designs-trade-marks-anr/
Article Information
A CRITICAL ANALYSIS OF PATENTABILITY OF SOFTWARES UNDER INDIAN PATENTS ACT 1970
Authors: SHASHANK B V
- Journal IJLRA
- ISSN 2582-6433
- Published 2023/04/27
- Volume 2
- Issue 7
About Journal
International Journal for Legal Research and Analysis
- Abbreviation IJLRA
- ISSN 2582-6433
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