ANALYSIS OF SOFTWARE PATENTING IN INDIA IN LIGHT OF RECENT DEVELOPMENTS
Updated: Jul 15, 2021
The analysis of the issue of software patenting in India has assumed significant importance. This is in light of the substantial role played by the Indian software industry in contributing to the growth of the Indian economy, especially due to the still-unresolved ambivalence in the law that regulates the topic. There is something to be said for the fact that the Delhi High Court in 2019 in Ferid Allani v. Union of India failed to define essential concepts on which the decision is based, especially since the judgement continues to act as the ruling precedent. Though the Patents Act, 1970 provides for a clear exclusion, the boundaries of inclusion remain open-ended. Thus, a definitive stand by Indian Courts is essential to finally put the rickety case-by-case tactic to rest.
In this article, the author discusses the basics of software patenting along with the relevant legislations and the legal regime in India pertaining to software patenting. After reconciling the concept of ‘computer programme’, or rather its lack of inclusion, the author analyses software as an ‘invention’ before reaching the conclusion that the outlines of software patenting in India are still blurred at best.
Basics of Software Patenting
Software has been defined as instructions that tell a computer what to do. It is a code, written as much as a novel or any other artistic work, which is why copyright is generally the first IP-protection destination for a software. Some companies prefer to reserve the protection of trade secrets for source-codes. The question remains that when, if ever, software could be granted the protection of a patent in India and what characteristics of a software present barriers for it to be considered as an IP fit for the protection of a patent?
The idea behind software patenting lies in its binary nature; software is a combination of the written code and the technical concept used to produce it. Copyright protection does not extend to ideas—quite possibly the rule zero of copyright—and that is where patents come in. In the case of Baker v. Selden[i] the Court had drawn a thin line (but a line nevertheless) when it had differentiated between copyright and patent. The reasoning employed was explained through the illustrations in a book. A copyrighted book containing diagrams may only be granted protection to the extent of the diagrams as one whole and not to the actual method used to create those diagrams. Only a patent could realize such a monopoly. This is because if an idea could be expressed in only one possible way, and copyright protection is extended to it then the merger doctrine is invoked, which prevents an infringement into patent-territory. This is precisely why, in the controversial and longstanding case of Oracle v. Google, the latter did not ‘seek to protect the ideas embodied in Java’ but only the right for the ‘particular expression of those ideas.’
Legislation/s on Software Patenting in India
In India, the discussion begins with Section 3(k) of the Patents Act, 1970 [as amended by The Patents (Amendment) Act, 2002] according to which, “a mathematical or business method or a computer programme per se or algorithms” are not considered inventions and therefore are not patentable. The knee-jerk response would be that the Act leaves scope for software patenting since it only rejects as an invention a computer programme per se, while software is a set of computer programs. But that is far from the scope of ‘per se’ as envisaged by the legislature, which is evident from the clarification issued by the Report of The Joint Committee [The Patents (Second Amendment) Bill, 1999] according to which although a computer programme remains unpatentable anything “ancillary thereto or developed thereon” was not extended the same restriction. The 2017 Guidelines for Examination of Computer Related Inventions (CRIs) set out the two categories of claims directed towards software which are specifically excluded from patentability. Yet to determine what is safely included in the ambit of patentability requires a deeper study.
The lens for scrutiny therefore shifts on what would qualify as ‘ancillary’ or ‘developed’ concerning a computer programme. The least that one might agree upon is that anything essential to implement a software is ancillary.[ii] In the current times of the internet, software code is less frequently transmitted through hardware. Therefore, restricting the definition of ‘ancillary’ to a hardware/software combination would not be viable today. This is also evident from a comparison between the 2017 and 2016 CRI Guidelines; in the latter, an indicator of patentability of CRIs is “if the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention,” which is absent from the 2017 Guidelines. Unfortunately, this omission has only served to introduce uncertainty in Indian patent legislation-system, much as the ‘abstract idea’ test in the U.S.
Reconciling the Exclusion of ‘Computer Programme’
In 2011, the IPAB in Yahoo Inc. v. Assistant with a Coram of two had categorically stated that “…technical advance comparison should be done with the subject matter of invention and it should be found it is not related to any of the excluded subjects.” However, a single bench of the High Court of Delhi in Ferid Allani v. Union of India recently attempted to clear the air when it introduced the standard of “technical contribution” for deeming an application patent-eligible. Rejecting patents merely because it made use of a computer programme was considered to be a counterproductive interpretation of the term ‘per se’ introduced via amendment. Yet the Court failed to define the ambit of “technical contribution” which is an oversight that may well result in a stalemate for future patent applications until it is resolved. Section 2(1)(ja) of the 1970 Act, in defining an ‘inventive step’ utilises the concept of technical advancement which provides some guidance in the absence of a conclusive definition, “…means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both…”
The 1998 decision of the Board of Appeals for the European Patent Office in an appeal by IBM also provides useful insight in this regard. Along similar lines as Section 3(k), Articles 52(2)(c) and 52(3) of the European Patent Convention (EPC) collectively provide that a computer program ‘as such’ is excluded from patentability. The Board held in the case that, “A computer program product is not excluded from patentability under Article 52(2) and (3) EPC if, when it is run on a computer, it produces a further technical effect which goes beyond the ‘normal’ physical interactions between program (software) and computer (hardware).”
Thus, it is evident that as matters stand today the standard against which software patentability would best be measured is that of technical advancement or contribution. Although the Indian Courts have not set out any determinative boundaries in the way of a definition, a case-by-case analysis of software patent applications seems to be their proposed modus operandi.
Software as ‘Invention’
If a software passes the test of patentability under Section 3(k), it might be brought under the scrutiny of Section 2(1)(j) of the 1970 Act. Generally, a five-point checklist suffices to deem an invention patentable or non-patentable:
Capable of industrial application
Accepted under the law as ‘patentable’
Of late the U.S. Courts have taken the test of an ‘abstract idea’ into consideration. Before a software implementation could be tested for its novelty, it must be seen whether or not it is based on an abstract idea. Only when the answer to this inquiry is found negative could the software program be considered patent-eligible, subject to other considerations. Needless to say, this is feared to have impacted innovation in the U.S. negatively.
Returning to the scope of ‘ancillary’, the software applications which have been granted patents in India may be studied to decipher the limits. Google LLC’s patent application titled, ‘Location History Filter’ managed to surmount the challenges of Section 3(k) by proving that its claims were not related to computer programmes but a computing device which enhanced its technical effect through certain constructional features. Here again, there is an emphasis on the enhancement in the technical effect to qualify as an invention, as well as chucking the title of a computer programme. Oracle International Corporation bagged a patent under the title, ‘System and Method for Commending Blogs’ after defending itself against Section 3(k) by stating that their invention provided a technical solution to a technical problem of collecting and collating information into a single blog which had not been achieved before. There are several more examples where patents for software applications have been granted in India.
The legislation and practices regarding software patenting all over the world are the equivalent of a skin shade card—varying but comparable. The U.S. is following the test of ‘abstract idea.’ Under U.K. law, an invention is only considered as such if it provides a technical contribution which is not excluded. Israel goes by the ‘process’ test which requires the subject-matter of the patent to generate a definite physical change. Malaysian patent law does not refer to software expressly in its provisions but if there is no specific inclusion there is no exclusion either. Japan, which allows patentability to software-related inventions and South Africa, which only requires the invention to be novel, non-obvious and useful are more liberal in their approach towards software patenting.
We can thus safely conclude that in India the jurisprudence has not developed to make standalone software patent-eligible. Software patents, therefore, impliedly denote inventions that although involve software as an essential element do not mean the software per se. The sense behind patenting a software, or copywriting it for that matter, is to provide an incentive to the inspired, and get their creative juices flowing. On the other hand, had technical concepts been patented and monopolised when the field had barely started blooming current BigTech companies (Google, Facebook, etc.) would have their work cut out for them. Since a patent comes with the caveat of domination, the legislature has to tread carefully when applying it to modern devices. Nevertheless, the scope of software patenting in India is blurred, and in dire need of some outlining so applicants can know how to keep the crayon within the lines.
[i] Dennis Crouch, Big Big Big Case: Oracle v. Google, Patentlyo, https://patentlyo.com/patent/2019/11/case-oracle-google.html (last visited on 26 September 2020). [ii]Guido Noto La Diega, The Internet Of Citizens: A Lawyer's View On Some Technological Developments In The United Kingdom And India, 12 Ind. J. L. & Tech. 53 (2016).
Title Image: Intepat IP
This article has been written by Sonal Okhade. Sonal is a penultimate-year law student at National Law University, Nagpur.