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SUSTAINABLE INTELLECTUAL PROPERTY ECOSYSTEM FOR COMPUTER RELATED INVENTION IN RELATION TO PATENTING THE SOFTWARE TECHNOLOGIES IN INDIA.
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SUSTAINABLE INTELLECTUAL PROPERTY
ECOSYSTEM FOR COMPUTER RELATED INVENTION IN RELATION TO PATENTING THE SOFTWARE
TECHNOLOGIES IN INDIA.
AUTHORED BY
- MR. PRATYUSH PANDEY[1]
& DR.
ANSHUMAN MISHRA[2]
ABSTRACT
The transformation of disruptive
technologies has led to evolve the Computer Related Inventions. Computer
Related Inventions are those inventions which involve computer as a medium to
achieve the result. These inventions are used in various industries such as
healthcare, automobile, agriculture, finance, education, telecommunication etc.
In India, in order to get patent, these inventions have to fulfill the criteria
of patentability. Section 3(k) of the Patent Act puts a bar on the inventions
in respect of mathematical or business methods, computer program per se or algorithms. In relation to the
software technologies where Computer Related Invention is involved, section
3(k) holds a great importance for the grant of patent. The term per se used under section 3(k) of the
Act, limits the scope of the patentability of the Computer Related Inventions.
However, the term per se itself is
not defined under the Act. Guidelines for Computer Related Invention issued by
the Office of the Controller General of Patents, Designs and Trademarks, 2017
has assigned dictionary meaning to the term per
se. Therefore, there persists an issue as to what is the scope of section
3(k) in relation to Computer Related Invention. Whether the computer program is
patentable or it is excluded completely from the patentability criteria. This
paper examines and explores this issue in the light of various judgments, laws
of different jurisdictions and the guidelines for the Computer Related
Inventions.
Keywords: Computer Related Invention,
Patentability, Guidelines for Computer Related Inventions, and Patent Act.
INTRODUCTION
21st century is witnessing
the drastic technological transformation. These technologies lead to innovation
by using computer related invention and software. Such computer related
inventions further become the subject matter of the patent. However, in India and
other jurisdictions as well, a computer related invention must pass the
threshold of the patentability criteria. In India, the legislature has defined
certain non-patentable subject matters which are although invention but can’t
be patented. One of the sections that excludes the invention from granting the
patent is section 3(k) of the Patent Act. It deals with the patentability
criteria of computer related inventions. It basically excludes the computer
program per se from the
patentability. This section that excludes the computer program itself posed
certain issues as to what is the meaning of the term per se? This terms itself has not been defined in the Act. Thus, in
order to understand the meaning of it, one has to either take its dictionary
interpretation or the meaning assigned by the judiciary in different
jurisdictions. The interpretation of Section 3(k) of the Indian Patent Act,
particularly concerning the exclusion of "computer programs per se,"
has been a subject of significant debate and legal scrutiny within the realm of
intellectual property law. At the heart of this debate lies the meaning and
scope of the term "per se" as applied to computer programs, raising
fundamental questions about the patentability of software innovations in India.
Section 3(k) of the Indian Patent Act
prohibits the grant of patents for inventions that are "computer programs
per se." This statutory provision has generated considerable ambiguity and
controversy regarding the extent to which software-related inventions qualify
for patent protection. The phrase "per se" has emerged as a focal
point of legal analysis, as its interpretation holds profound implications for
innovation, competition, and technological progress in the digital age.
The term "per se" denotes
something considered in itself, inherently, or as a matter of its own essence,
without any additional or accompanying elements. In the context of Section
3(k), the inclusion of "per se" raises questions about whether patent
eligibility hinges solely on the nature of the software itself, independent of
any specific technical context, application, or inventive contribution.
This introductory section sets the
stage for an in-depth exploration of the issues surrounding the meaning of
"per se" in the context of computer programs under Section 3(k) of
the Indian Patent Act. It highlights the significance of clarifying the scope
and boundaries of patent eligibility for software innovations to foster
innovation, encourage investment, and strike a balance between promoting technological
progress and safeguarding public interests.
Against this backdrop, this research
aims to dissect the legal and policy dimensions of the "computer programs
per se" exclusion, analyze judicial precedents and administrative
guidelines, evaluate competing interpretations and arguments, and offer
insights into the implications for India's software industry, innovation
ecosystem, and broader intellectual property landscape. By shedding light on
the nuanced nuances of this contentious issue, this research seeks to
contribute to a deeper understanding of the challenges and opportunities
inherent in regulating software patents in India's rapidly evolving digital
economy.
COMPUTER RELATED INVENTION AND
INDIAN PATENT LAW
In India, the Patents Act of 1970 excludes
"mathematical or business methods, computer programs, or algorithms"
from patentability under Section 3(k).[3]
The addition of "computer programme per se" in 2002, as recommended
by the Joint Parliamentary Committee (JPC) Report of 2001, indicates a legislative
intent to grant patents for inventions extending beyond mere computer programs.[4]
The JPC report clarified that while computer programs may include additional
elements, patents should not be denied if they represent genuine inventions.
However, the lack of a clear definition of "computer programme per
se" in the Act and the evolving guidelines of the Indian Patent Office
have led to inconsistent patent practices. Some controllers have insisted on
including novel hardware features in claims related to Computer Related
Inventions (CRIs), despite no such requirement in the Act or the Patents Rules
of 2003, causing difficulties for applicants.[5]
According to the Patent Act, computer
software itself cannot be patented, leading to differing opinions among
supporters and opponents of software patents. It could be argued that this
clause implies that only software integrated into a larger invention, meeting
the Act's patent criteria, could be considered for patenting. This clarifies
that standalone software is not patentable under Indian law. Since software
requires hardware to function, software running on a general-purpose computer
is ineligible for patents. Simply incorporating standard data processing
equipment into a software application does not transform it into an invention.
Only when the software application is part of a broader system that meets
patent eligibility criteria can the entire invention be patented.
In Section 3(k) of the law, it is
explicitly stated that computer programs are inherently not eligible for
patents. Now, what exactly does this "per se" signify? Should we rely
on dictionary definitions or interpretations from legal precedents such as
those set by the ECJ or US courts? It is imperative that the scope of "per
se" be clearly delineated.
The rationale behind introducing
"per se" was elucidated in the report of the Joint Committee on the
Patent (Second Amendment) Bill, 1999.[6] The
addition aimed to address scenarios where a computer program might encompass
additional elements or developments. The intention was not to deny patents for
inventions that incorporate such elements, but rather to clarify that
standalone computer programs were not intended for patent protection. This
clarification was proposed to bring clarity to the law.
The ruling of the Delhi High Court in
the Ericsson v. Intex[7]
case underscored that computer-related inventions with a technical contribution
or effect are patentable in India, aligning with decisions made by courts in
the EU and the UK.
Understanding this exception requires
reference to relevant sections of the Manual of Patent Office.[8]
Section 08.03.05.10 of the Manual clarifies that mathematical or business
methods, computer programs per se, or algorithms are not considered inventions
and therefore cannot be patented.[9]
The Indian Patent Office (IPO)
initially released a draft version of guidelines for computer-related
inventions (CRI) on June 28, 2013. After gathering feedback from various
stakeholders, the final guidelines were issued on August 21, 2015. This final
version was more permissive compared to the draft. However, on December 14,
2015, the final guidelines were suspended via a public notice, without clear
explanation for the change. Subsequently, a revised set of guidelines, stricter
than the previous ones, was issued on February 19, 2016. Stakeholders
dissatisfied with the restrictive terms appealed to the Department of
Industrial Policy and Promotion (DIPP) and the IPO for reconsideration. The
latest iteration, released on June 30, 2017, reflects a return to the more
lenient approach. These guidelines are based on recommendations from an expert
committee established by the DIPP, which thoroughly reviewed various inputs and
conducted extensive consultations with stakeholders.
As per the 2016 CRI Guidelines,
examiners are instructed to follow a three-stage test when examining CRI
applications: first, accurately interpret the claim and determine the actual
contribution; if the contribution is solely a mathematical or business method
or algorithm, reject the claim; if the contribution involves computer
programming, ascertain if it's accompanied by novel hardware and proceed with
other patentability assessments. The guidelines emphasize that computer
programs themselves are not patentable. If the contribution solely resides in
the computer program, the claim is to be denied. However, if the contribution
involves both the computer program and hardware, further patentability
assessments are warranted.
These guidelines clarify that
subsection 3(k) of the law excludes mathematical methods, business methods,
computer programs per se, or algorithms from patentability. Computer programs
are typically claimed in the form of algorithms in method claims or system
claims, with certain "means" indicating functions via flow charts or
process steps. It's stressed that the focus in establishing patentability
should be on the essence of the invention rather than its specific claimed
form.
In reference to these guidelines, the
2016 Special 301 Report from the USA notes that India has introduced
uncertainty for patent applicants through the issuance of CRI patentability
guidelines following a non-transparent process for gathering comments.
It's important to highlight that the
criteria of 'further technical effect' and 'technical advancement', previously
emphasized in the guidelines, have been entirely eliminated in the 2016
Guidelines. Instead, a comprehensive new test has been introduced under
Regulation 4.2. Patent applicants will now need to convincingly demonstrate
that their invention exhibits either technical advancement or economic
significance compared to existing inventions in the respective field.
Additionally, it's noteworthy to
consider the observation that "the updated CRI guidelines are expected to
restrict the global reach of Indian software firms, which have traditionally
relied heavily on software-enabled services. The growth trajectory of Indian
software companies, including numerous dynamic startups, will hinge on their
capacity to develop patentable innovations to tap into the international
market."[10]
Critiques of the 2016 guidelines
prompted the introduction of new guidelines in 2017 for CRIs. The most significant
change in the recent guidelines is the abandonment of the three-step
examination process outlined in the prior guidelines. The latest document omits
any reference to novel hardware as a prerequisite for patent approval. The
revisions have been meticulously executed, with even subtle or implicit
mentions of hardware being expunged. For instance, paragraph 4.4.5 of the 2016
guidelines contained two instances of the term "implementation" of
claimed inventions, which have now been replaced by the term
"performance".[11]
While "implementation" implies hardware, "performance" does
not. Analogous to traitors in Ancient Rome or the intelligentsia in Stalinist
Russia, the requirement for novel hardware appears to have been eradicated and
forgotten, removed entirely from official discourse.[12]
The official stance of the Indian
Patent Office, as reported by PTI regarding the 2017 guidelines, asserts that
the new guidelines simply clarify the patent office's earlier directives. There
has been no change in the policy regarding the granting of patents for CRIs.
"The language used in the
guidelines issued in February 2016 may have given the impression that the
'novel hardware' clause was obligatory for obtaining patents for CRIs, which
was not the case. However, the Indian Patent Office has revised those
guidelines and clarified that this clause is not mandatory."
Section 4.5.4 of the 2017 Guidelines
for Examination of Computer Related Inventions (CRIs), issued by the Office of
the Controller General of Patents, Designs, and Trademarks, addresses claims
related to "Computer Programme per se." Such claims, which focus
solely on computer programs, are not eligible for patent protection. This
includes claims directed at computer programs, sets of instructions, routines,
and/or sub-routines, as well as claims targeting "computer programme
products," "Storage Medium having instructions,"
"Database," or "Computer Memory with instruction" stored in
a computer-readable medium.
Upon thorough examination, it appears
that while the recent CRI guidelines, although somewhat ambiguous, seem to
adopt a stance akin to that proposed by the Court of Appeal of England and
Wales in Aerotel/Macrossan's regarding the exclusion of "computer
programme per se" under Indian patent law. As previously mentioned, the
test entails four steps: (1) Interpret the claim accurately; (2) ascertain the
genuine contribution; (3) determine if it falls exclusively within the excluded
subject matter; and (4) assess whether the actual or alleged contribution possesses
a technical nature.
JUDICIAL PRONOUNCEMENTS
Over the years, judicial rulings have
added to the complexity for applicants by challenging the restrictive stance
taken by the Patent Office. Notably, decisions by the erstwhile Intellectual
Property Appellate Board (IPAB) in cases like Enercon India Ltd. v Aloys
Wobben[13]
and Accenture Global Service GMBH v The Assistant Controller of Patents
& Designs[14]
have provided some clarity on the patentability of Computer Related Inventions
(CRIs), offering a method to distinguish patentable computer-related
applications from what constitutes "computer programme per se".[15]
In the Accenture case, the Patent
Office initially rejected a patent application concerning a system and method
for developing an internet-hosted business application composed of web
services, citing Section 3(k).[16]
They applied a two-pronged standard to assess the invention's patentability,
aiming to determine whether: The invention pertained to a hardware
configuration executing a novel function.
The novel feature of the invention was
either embedded within a set of instructions tailored to prompt the hardware to
execute specific operations without requiring hardware customization, or they
were incorporated into alterations made to the hardware itself (innovative
hardware). The Patent Office determined that without innovative hardware, the
invention did not meet the criteria for patentability outlined in Section 3(k).
In a subsequent appeal to the IPAB, Accenture argued that the standards applied
by the Patent Office were not specified in the Act or the Manual of Patent
Office Practice and Procedure. The IPAB concurred, noting that the inclusion of
a 'novel hardware' element is not obligatory to meet the requirements of
Section 3(k). Consequently, the case was referred back to the Patent Office.
Upon review, the Patent Office approved the application, recognizing that the
invention led to advancements in web services and software, thus falling
outside the scope of "computer programme per se" as delineated in
Section 3(k) of the Act.
RECENT TRENDS IN INDIA
Despite court rulings and guideline
revisions, the current stance on the patentability of CRIs in India remains
plagued by inconsistent application by the Patent Office. This inconsistency
has unfortunately resulted in the unjust dismissal of deserving applications.
When compounded by arbitrary rejection orders – those lacking analysis or
detailed reasoning – applicants find themselves in a difficult situation,
unsure of the Patent Office's position regarding CRI patentability. This issue was
recently addressed in the High Court of Delhi's verdict in Microsoft
Technology Licensing, LLC v Assistant Controller of Patents and Designs.[17]
In this case, Microsoft submitted an application concerning a two-tier
authentication system utilizing distinct cookies. This technique aims to
enhance user authentication while accessing network sub-locations, thwarting
potential intrusions by malicious users attempting to obtain cookies illegally
from other users. However, the controller, in rejecting the application, deemed
the subject matter as pertaining to a "computer programme per se,"
with the inventive step lying within non-patentable subject matter under
Section 3(k) of the Act. Microsoft challenged this decision, arguing that the
controller's interpretation of Section 3(k) was flawed. Citing precedents such
as the Ferid Allani and Intex cases, Microsoft contended that the invention
should not be classified as a "computer programme per se," as it
addresses a technical process and resolves a technical issue of data security
on a network. In response, the Patent Office countered the appeal, asserting
that Microsoft had misunderstood the legislative intent behind Section 3(k),
and the controller rightfully rejected the application, as the invention
predominantly involves a set of instructions implemented on a "computer
programme per se."[18]
The High Court of Delhi extensively
deliberated on three major issues:
(i)
The
inception and development of Section 3(k) of the Act;
(ii)
The
legislative intent behind incorporating "per se" into the Act; and
(iii)
The
guidelines concerning Computer Related Inventions (CRIs) issued by the Patent
Office.[19]
Furthermore, it explored the concepts
of technical effect and reviewed legal stances in the US and the EU regarding
the patentability of CRIs. Underlining the necessity of establishing a precise
definition of "per se" for proper legal interpretation, the court
asserted that "per se" unequivocally denotes that "computer
programmes as such" are not eligible for patents. Consequently, inventions
demonstrating a technical effect and offering a technical solution to a
technical problem, even if grounded in software, may qualify for patents.
Reiterating the legal principle established in the Ferid Allani case[20],
the court emphasized the critical role of understanding and applying technical
advancement and technical effect in assessing the patentability of CRIs. The
court clarified that a technical effect or contribution can be evident in an
invention if it addresses a "technical problem, enhances a technical
process, or provides some other technical benefit." It asserted that the
mere inclusion of a mathematical method or computer program per se does not
automatically render the invention non-patentable under the Act. Expressing dissatisfaction
with the Patent Office's stringent requirement of novel hardware for CRI
applications, the court maintained that patent applications should be evaluated
in light of established judicial precedents, Section 3(k) provisions, existing
CRI guidelines, and other relevant legislative frameworks. Additionally, the
court urged examiners to scrutinize each application individually, focusing on
the essence of the invention rather than solely on its claims, to ensure that
deserving applications featuring technical advancement and offering real-world
solutions receive patent protection.
Critiquing the removal of examples
and illustrations of patentable and non-patentable inventions from the 2017 CRI
guidelines, the court directed the Patent Office to develop 'signposts' and
'indicators' based on case law to guide examiners, promoting uniformity and
consistency in the examination process of CRIs, aligning with international
practices such as those of the USPTO and the EPO. Ultimately, the court
concluded that the claimed invention presents an innovative solution to a
security issue by introducing a two-tier authentication process and enhancing
the user experience. It found that the controller had overlooked the technical
aspects of the invention and instructed the Patent Office to reconsider the
application, considering the comprehensive criteria for analyzing
computer-related inventions as a whole, including their technical
contributions.
CONCLUSION
The latest rulings represent
progress, yet the crucial factor lies in how the Patent Office will respond and
implement fresh methodologies. Primarily, what's needed is a fairer and more
uniform approach, which has long been challenging for applicants. The Patent
Office must facilitate deserving owners of Computer Related Inventions (CRIs)
to pursue patent safeguarding in India, thereby aiding the Intellectual
Property (IP) system in realizing its full capabilities. According to a report
released by Nasscom in April 2023, more than half of the new technology patents
filed in India during the previous decade originated from either the internet
of things or artificial intelligence sectors. The rapid advancement of software
technology underscores the necessity for establishing a sustainable
intellectual property (IP) environment for inventions driven by technology,
with a call for more lenient laws governing the patenting and protection of
software technologies in India. The year 2023 commenced with significant
rulings from the High Court of Delhi regarding the proper interpretation of
Section 3(k) of the law. Alongside the Microsoft case, on March 29, 2023, the
Division Bench of the High Court of Delhi, in the Intex v Ericsson case, upheld
the conclusions of the Single Bench that an "invention providing a
technical contribution or technical effect is not merely a computer program per
se and is eligible for patenting."
In the case of OpenTV Inc. v The
Controller of Patents and Designs and Anr[21],
the court determined that inventions demonstrating a technical effect and
addressing a technical issue may be excluded from the purview of Section 3(k).
The court also referenced the 161st Report of the Review of the Intellectual
Property Rights[22] Regime
in India presented by the parliamentary standing committee, suggesting that
"a considerable number of innovations in emerging technologies, including
those by small and medium-sized enterprises (SMEs), startups, and educational
institutions, could involve business methods or the application of computing
and digital technologies. Consequently, there is a necessity to reconsider the
exclusions outlined in Section 3(k) of the Act in light of the burgeoning
innovations.
REFERENCE
·
Ashish Bharadwaj, Patents on software: India's CRI
Guidelines Create Impractical Situation, available at: http://www.financialexpress.com/opinion/patents-on-software-indias-cri-guidelines-create-impracticalsituation/424635/
·
Guidelines for Examination of Computer Related
Inventions available at
https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_83_1_Guidelines-for-Examination-of-CRIs-19-2-2016.pdf
·
Manual of Patent Office Practice and Procedure Version
01.11 As Modified on March 22, 2011, Published By: The Office of Controller
General of Patents, Designs & Trademarks.
·
ONE HUNDRED AND SIXTY FIRST REPORT Review of the
Intellectual Property Rights Regime in India (Presented to the Rajya Sabha on
23rd July, 2021)
·
Parliament of India Rajya Sabha The Patents (Second
Amendment) Bill, 1999 Report of The Joint Committee, 2001.
·
Ravindra Chingale and Srikrishna Deva Rao,
"Software Patent in India: A Comparative Judicial and Emperical
Overview", 20 Journal of Intellectual Property Rights, July 2015
·
The Patents Act, 1970
CASE LAWS
·
Accenture Global Service GMBH v The Assistant
Controller of Patents & Designs, IPAB, OA/22/2009/PT/DEL, 28th December,
2012.
·
Enercon India Ltd. v Aloys Wobben, W.P.No.20165 of
2010
·
Ferid Allani v Union Of India and Ors. W.P.(C) 7/2014
& CM APPL. 40736/2019
·
Microsoft Technology Licensing, LLC v Assistant
Controller of Patents and Designs, 2023:DHC:3342
·
OpenTV Inc. v The Controller of Patents and Designs
and Anr, C.A.(COMM.IPD-PAT) 14/2021
[1] Research
Scholar, Faculty of Law, University of Allahabad. (Email: pratyush1211@gmail.com, Mob: 7376748533)
[2] Associate
Professor, Faculty of Law, University of Allahabad. (Email: anshumanmishra73@gmail.com)
[3]The Patents Act, 1970, s. 3 (k).
[4]The Parliament added the words per
se after accepting the proposition which
was introduced in section 3(k) enacted by the Patent (Amendment) Act, 2002.
I.A. No. 6735/2014 in CS (OS) No.1045/ 2014 at 151.
[5] See also, Ravindra Chingale and
Srikrishna Deva Rao, "Software Patent in India: A Comparative Judicial and
Emperical Overview", 20 Journal of Intellectual Property Rights, July 2015
at 212
[6]Parliament of India Rajya Sabha The Patents (Second
Amendment) Bill, 1999 Report of The Joint Committee, 2001.
[7]I.A. No. 6735/2014 in CS(OS)
No.1045/ 2014.
[8]Manual of Patent Office Practice
and Procedure Version 01.11 As Modified on March 22, 2011, Published By: The
Office of Controller General of Patents, Designs & Trademarks.
[10]Ashish Bharadwaj, Patents on
software: India's CRI Guidelines Create Impractical Situation, available at: http://www.financialexpress.com/opinion/patents-on-software-indias-cri-guidelines-create-impracticalsituation/424635/ (last visited on 23/03/2024)
[11] Guidelines for Examination of
Computer Related Inventions available at
https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_83_1_Guidelines-for-Examination-of-CRIs-19-2-2016.pdf
[13]W.P.No.20165 of 2010
[14]IPAB, OA/22/2009/PT/DEL, 28th
December, 2012.
[17]2023:DHC:3342
[18]Microsoft
Technology Licensing, LLC v Assistant Controller of Patents and Designs,
2023:DHC:3342
[21]C.A.(COMM.IPD-PAT) 14/2021
[22]ONE HUNDRED AND SIXTY FIRST REPORT
Review of the Intellectual Property Rights Regime in India (Presented to the
Rajya Sabha on 23rd July, 2021) (Laid on the Table of Lok Sabha on 23rd July,
2021).
Article Information
SUSTAINABLE INTELLECTUAL PROPERTY ECOSYSTEM FOR COMPUTER RELATED INVENTION IN RELATION TO PATENTING THE SOFTWARE TECHNOLOGIES IN INDIA.
Authors: MR. PRATYUSH PANDEY, DR. ANSHUMAN MISHRA
- Journal IJLRA
- ISSN 2582-6433
- Published 2024/05/09
- Issue 7
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