Patent Protection for Software in India

India is one of the major exporters of software services with an advanced software industry. In times of such technological advancements the programmers often suffer from losses because of piracy of the software or that of being rendered obsolete by reverse engineering or otherwise. Therefore, protecting the intellectual property vested in such software becomes mandatory. The protection so granted promotes creativity along with defending economic interests of the innovator.

Intellectual property in a software can be protected under the copyright law, the patents law and at times as a trade secret as well.

Patent protection to a computer software has been a contentious issue in intellectual property regime. In absence of a legal definition of a “Software Patent”, the Foundation for a Free Information Infrastructure (FFII) has come up with it being a "patent on any performance of a computer realized by means of a computer program".

Nevertheless, Section 2 (ffc) of the Copyright Act, 1957 defines a ‘Computer Software’ as a “set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result”. Accordingly, the copyright law in India protects the code written by a programmer, but provides no protection to the inventive idea associated with the code.

Undoubtedly, patent protection is more advantageous to the programmer but unfortunately it cannot be patented as such. Eventually, the intellectual property law protection sought for the software is dependent on the choice of the programmer as well.

Article 27 of the TRIPS, sans defining meaning of “Invention”, goes on to say that the patent protection is available for all inventions irrespective of field of technology and puts down the criteria of novelty, inventive step and industrial use for granting of patent.

Article 10 of the TRIPS provides that the ‘Source Code’ and ‘Object Code’ of a program can be protected as ‘Literary Work’ under the Berne Convention of 1971.

Original literary, dramatic, musical and artistic works, cinematograph films and sound recordings are protected under the Copyright Act of 1957. Computer programs are included in the list of literary works and are therefore granted copyright protection. It is the most conventional way of protecting the intellectual property in computer programs.

The ownership of a copyright vests in the author. Yet in case of software, often, an employee-employer relationship exists wherein the employer is the first owner of the work in absence of any agreement to the contrary.

The Copyright Act authorises fair use and reverse engineering of the software as also the copies or adaptation of such program by an assignee or license holder. Moreover, the methods of operation and program principles involved therein do not hold protection of copyright law.

Copyright law in India has been successful in protecting software, as elucidated in Microsoft Corporation v. Yogesh Popat, where the High Court of Delhi awarded INR 1,795,000 along with injunction to Microsoft for copyright infringement.

Copyright law does not protect the process, procedure or invention of a software. Computer software, algorithms and codes are differently treated, and the patent law considers them as a form of applied mathematics. Often a software patent is limited to the ones involving ideas and techniques of programming to augment a computer’s performance.

1. The United States

The jurisprudence of software patents has developed in recent past in the US. The Supreme Court in Alice Corp Pty. v CLS Bank International held that inventions engaged to an abstract idea instead of an improvement in functioning of computer cannot be provided with patent protection. The courts of US rely on technical advantage along with new, non-obvious and use criteria for patent of an invention.

2. European Union

Article 52(c) and 3 of the European Patent Convention (EPC) provides that a computer program as such cannot be patented. However, in In Re, International Business Machines Corporation, the Board of Appeals for the European Patent Office (EPO) stated that all the computer programs must not be excluded from patent protection under Article 27 of the TRIPS Agreement and came to conclusion that stand-alone computer programs are only non-technical. Hence, a technical software is patentable, in whatever medium recorded.

3. Japan

Japan forms an exception and under its Patent Act software is unequivocally patentable, provided it is a “creation of technical ideas utilizing the law of nature”, and as per the guidelines of Japan Patent Office, a computer program can be provided with patent protection if it establishes that the software works in consonance with a hardware.

4. India

The Indian Patent Act, 1970, that administers all aspects of the patenting in India does not define of the term “Software” or a “Computer Program”. In general, technology-related patents, not pertaining to a hardware, are considered software patents or business method patents. Section 3 of the Act provides for the inventions that cannot be patented. Further, the sec 3(k) of the Act excludes ‘mathematical or business or a computer program per se’ or ‘algorithms’ from patentability.

‘Invention’ is defined under Section 2(i)(j) as a new product or process involving an inventive step and capable of industrial application.

Accordingly, in India, a software cannot be directly patented but only if attached with a novel hardware which happens to be a unique invention and capable of industrial use. Something more than a stand-alone software is needed to be successful in a patent application, despite being a high-quality innovation. Section 3(k) disallows software patents without any hardware applicability.

The Computer Related Inventions (CRI) guidelines of 2016, issued by the Office of the Controller General of Patents, Designs and Trademarks, provide that a computer program or software cannot be patented as such. The application is denied if the patent is for a mathematical method, business method or algorithm. Accordingly, patent can be granted for a computer software having the quality of ‘technical application to the industry’ in ‘combination with hardware’. It is called ‘Novel Hardware Requirement’.

• The examiners must appropriately interpret the claim and recognize the true contribution of the claim.
• If the contribution of claim is limited to only mathematical method, business method or algorithm, the claim is denied.
• If claim for patent is that of a computer program, it must be checked for being in consonance with a novel hardware and then must be proceeded to other stages for determination of patentability.

If the claim’s contribution is of a computer program per se, the claim is denied and if it is both the computer software and hardware, the claim is proceeded with further steps for patent grant.

However, Business methods are non-patentable under the 2016 Guidelines in India. Nevertheless, four business method have been granted patent protection in India in 2017 as discussed later in this article. Meanwhile, “Novel Hardware” is not defined in the CRI Guidelines which affords free hand to the examiner for interpretation.

Furthermore, the Computer Related Invention (CRI) guidelines have been issued by the Indian Patent Office (IPO) in June 2017, wherein tests promulgated above have been put to end along with illustrations of patentable and non-patentable claims. Additionally, the guidelines do not provide tests or determinants for CRI patentability. Consequently, the examiner must judge a claim on the anvil of substance and not form of the invention.

Therefore, if in substance the claim for patent is in form of a method, a process, an apparatus, a system, a device, a computer program product or a computer readable medium, it is not patentable and exclusion must not be overridden by masking the substance of the claim using smart language.

It is imperative to establish whether the claim involves technical advancement as equated to the prevailing knowledge or with significant economic advantage or both.

Further, a claim must be taken as a whole. When falling under the above-mentioned excluded cases, the claim is denied. Though, taken as whole, if it steers clear of the exclusion, patent is granted.

• Accenture Global Service GMBH v. Assistant Controller of Patents & Design and the Examiner of Patents

The applicant pursued for grant of patent on a method to generate a data mapping document. The invention claimed was "technical solution to a technical problem of the need for a data document design system and design tools that addresses one of the most important technical challenges faced by database systems is data migration." The objection being that technical effect of data mapping cannot be recognized. The Patent Office granted the patent considering it to be not a stand-alone computer program.

• Google

Google applied for patent for their invention “phrase identification in an information retrieval system”, in 2005 February. One of the claims was objected for being a basic mathematical algorithm comprising logical steps. Google submitted that the invention "provides a technical solution to a technical problem of how to automatically identify phrases in a document collection" and not per se a computer program but also that the technical solution is the index i.e. stored in memory entailing associated valid phrases and, therefore, inventive. Bearing in mind that it is "a technical advancement over the prior art”, patent was granted in 2017.

• Apple

Apple in 2009 applied for a patent for “method for browsing data items with respect to a display screen associated with a computing device and an electronic device”. It was objected for being a software per se. Apple contented that the method "although the steps of the method can be performed by means of software, the method constitutes a practical application of this computer software to produce a useful result bringing an improved technical effect while presenting advantages and overcoming drawbacks of hitherto known techniques". As the claim provided an improved technical, the patent was granted by the Kolkata Patent Office.

India is a developing country with an expanding economy with a very well-developed service sector piggybacking on the software revolution. A country with huge population and ever-increasing digitisation has made software giants like Microsoft, Google, Facebook and Apple to invest profoundly in India.  India’s achievements in the field of technological innovations cannot be unheeded and therefore cannot afford to deny patent protection to software and computer programs as they are backbone of invention and business and development in this time and age. The government has come up with Computer Related Invention guidelines in 2015, 2016 and 2017 to streamline the patentability of software and the guidelines of 2017 have removed the ambiguities related software patents to a great extent.