SOFTWARE PATENTABILITY: A NEVER ENDING CONUNDRUM
Author: Helan Benny, IV year of B.Com., LL.B. from Bharata Mata School Of Legal Studies, Kerala
Co-Author: Vijay Mathews, IV year of B.B.A., LL.B. from Bharata Mata School Of Legal Studies, Kerala
Software, in its broader sense, is the collection of data or a set of instructions to perform a particular task or achieve a particular result. In this globalized era, the computer plays an inevitable role in day-to-day life. Right from an infant to a septuagenarian, everyone is living in the world of technology. This augmented the creation of new and effective software eradicating outdated technologies and improving efficiency in various fields. The term ‘software’ is nowhere defined in the Information Technology Act 2000 or Copyright Act 1957 or Patents Act 1970. Software is the instructions that control what the computer does; computer programs[i]. The definition of ‘computer programme’ according to section 2(ffc) of Copyright Act 1957 is 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. This definition is squarely applicable to software also. Normally software as a product falls outside the category of traditional goods and hence the question of protection arises. Under the umbrella of IPR, there are copyright and related rights, patent, trademark, geographical indication, trade secret, industrial design to recognize the rights of holders and protect against unlawful exploitation. Protection of software under the IPR mechanism will not only protect the holder’s economic interest but also nurture and encourage innovation and creativity. Software programs as a product encounter cutthroat competition with the beginning of the digital era and are being exploited to make undue economic gain. Ergo, the protection of software under IPR is an important issue to be on the table.
India was the first country to provide statutory protection to software programs under the Copyright Act, but from then the development was quite slow. The country failed to have a developed jurisprudence that specifically and exclusively deals with software programs. Currently, the software can be protected under copyright, patent and in some situations under trade secrets. Copyright is the most common method of protecting software programs as writing source code and object code. The patent is the realization of the concept in a concrete form and the strongest way to protect Intellectual Property by fulfilling certain stringent criteria. Section 3(k) of Patents Act, 1970[ii], per se excludes computer programs. This caused much conundrum to determine whether the software can be patented or not. The radical decision on the jurisprudence related to patentability of software and computer programs or Computer Related Inventions (CRI) was widely discussed in Ferid Allani vs. Union of India & Ors [iii].
SOFTWARE PROTECTION UNDER PATENT LAW
The Indian Patent Act 1970 (hereinafter referred to as "Patents Act" / "Act") lays down the criteria for granting the patent. Software or computer programs being the product of the intellectual process can be considered as "goods" as per the Sale of Goods Act and is liable for taxes[iv]. The definition of patent given in the Act is “patent means a patent for any invention granted under the act”[v].
The Act defines new invention under section 2(1) (l) as follows:
"New invention" means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of a patent application with complete specification, i.e., the subject matter has not fallen in the public domain or that it does not form part of the state of the art;
The Patents (Amendment) Act 2002[vi]came into effect on 20th May 2003. It amended the definition of the invention under section 2(1) (j) as;
“Invention” means a new product or process involving an inventive step and capable of industrial application;
and as per section 2(1)(ja) "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.
Potential industrial applicability is the inherent requirements for the grant of patents. An invention capable of industrial application means that the invention is capable of being made or used in industry[vii]. Section 3(k) of the Act precludes from patentability “a mathematical or business method or a computer programme per se or algorithms”.
UNCERTAINTY AND CONTROVERSY OVER SOFTWARE PATENTABILITY UNDER SUBSECTION 3(k)
Sub-section 3(k) of the Act excludes mathematical methods or business methods or a computer programme per se or algorithms from patentability. CRIs 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. Patentability is established on the underlying substance of the invention and not on the particular form in which it is claimed. The examination procedure of patent applications relating to CRIs is the same as that for other inventions to the extent of consideration of novelty, inventive step, industrial applicability and sufficiency of disclosure etc.[viii].
In Electronic Navigation Research Institute vs. Controller General of Patents & Design and Others[ix], the invention titled "A Chaos Theoretical Exponent Value Calculation system" was rejected by the patent office and an appeal was brought before the Intellectual Property Appellate Board (IPAB). Here, the technical advance in the invention was itself nothing more than "a mathematical method for solving mathematical claims which are further based on various algorithms." Hence, it was held that the Indian Patent law does not allow a patent for a mathematical method just because it provides a technical advance, ergo, rejected on the ground that it cannot cross the 3(k) bar.
In Yahoo vs. Controller of Patents, and Rediffcom India Ltd[x], one of the major decisions involving patentability of business method and subsection 3(k) was discussed in detail. It was held that pure business methods are not patentable and fell under the category of section 3(k). The Board, after considering the foreign jurisdictions (i.e., United Kingdom (section 2 of the U.K. patents act); Article 52(2) of the European Patent Convention; and the United States, 35 USC 101) concluded that in contrast to the foreign jurisdictions, in India, the law specifically per se excluded business methods with the clear statutory language.
Interestingly, the Delhi High Court, in Telefonaktiebolaget LM Ericsson vs. Intex[xi], Index Technologies Ltd were asked to pay 50 % of the royalties within four weeks to the Swedish telecom giant, Ericsson for infringing their eight Standard Essential Patents that are part of Ericsson's portfolio. The position of subsection 3(k) was clarified to a certain extent in this case.
The software invention, despite its special nature, is similar to inventions in other fields of technology. This assertion has been supported by the decision of Delhi High Court in Ferid Allani vs. Union Of India & Ors [xii] on 12 December 2019.
FERID ALLANI VS UNION OF INDIA & ORS
FACTS OF THE CASE
FeridAllani ("Petitioner"), who is a citizen of Tunisia, filed a patent application[xiii] seeking grant of the patent for a "method and device for accessing information sources and services on the web", consisting of both method claims (claims 1 to 8) and device claims (claims 9 to 14) for his invention. It was claimed that the invention provided a method and a corresponding device for accessing information sources and services on the web in a manner that is quicker and easier to use than the methods known at the time of invention.
The IPO rejected the patent application and came to the conclusion that claims 1 to 8 were hit by Section 3(k) of the Patent Act and claims 9 to 14 lacked novelty and inventive step which is an imperative ingredient under Section 2(i)(j). The Petitioner appealed against the IPO order with the Intellectual Property Appellate Board ("IPAB"). The Petitioner’s appeal before the IPAB challenging the said order of rejection was also dismissed by the IPAB by the impugned order. The reasoning given by the IPAB was that the patent application did not disclose any technical effect or technical advancement[xiv]. The Petitioner filed a writ petition before the Delhi High Court against the IPAB decision.
RELEVANCE OF THE CASE
The Court instructed to re-examine the Petitioner's patent application within two months. Post this order, after the re-examination and IPO again concluded that the invention lacks novelty and fell within the ambit of Section 3(k) of the Act. Ergo, the patent application once again was refused. However, the reasoning of the Delhi High Court assumes much relevance, since it proved to be the comprehensive decision on the jurisprudence related to the patentability of Computer-Related Inventions.
A radical approach was adopted by reiterating that section 3(k) bars only ‘computer program per se’ and not all inventions based on the computer programs. The words `per se‟ were incorporated to ensure that genuine inventions which are developed based on computer programs are not refused patents[xv]. Initially, when section 3(k) was presented the phrase ‘per se’ was not there. The addition of the terms `per se' in Section 3(k) was introduced in the Bill on the recommendations of the Joint Committee and was passed by the Parliament.
The legislative intent to include suffix per se to a computer programme is evident by the following view expressed by the Joint Parliamentary Committee while introducing Patents (Amendments) Act, 2002:
“In the new proposed clause (k) the words ''per se" have been inserted. This change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon. The intention here is not to reject them for grant of the patent if they are inventions. However, computer programmes as such are not intended to be granted patents. This amendment has been proposed to clarify the purpose.”[xvi].
The Delhi High Court held that an invention must be examined to check whether the invention results in a ‘technical effect’ or a ‘technical contribution’. If the invention demonstrates a ‘technical effect ‘or a ‘technical contribution’, it is patentable even though it may be based on a computer program[xvii].
The three sets of guidelines, published by the Patent Office are The ‘Draft Guidelines’ (the initial Guidelines), the ‘Guidelines’ (second document) and `Revised Guidelines’ (issued in 2017) should be considered in determining whether the invention demonstrates technical effect or technical contribution. There can be no doubt as to the fact that the patent application deserves to be considered in the context of settled judicial precedents[xviii] together with these guidelines.
A ROADMAP FOR NEW METHOD OF PROTECTION
The software patentability issue is difficult to resolve, considering the astounding diversity of opinions about the mere nature of computer programs[xix]. Perhaps the most obvious way forward is to judicially revisit this area of law to make it certain and clear. The software industry transforms through incremental innovations. Software is a very complex product because distinguishing the claims and methods and the technical effect is a hectic task. India was the first country to provide legal protection to the software programs under the Copyright Act, but from then, the evolution was lagging in this body of jurisprudence. One possible cause for this delay may be the absence of an effective patenting regime system for software. All these aspects need an in-depth examination before a proper application of patenting mechanism[xx].
The inclusion of subsection 3(k) was intended to clarify this issue but unfortunately, it leads to many controversies and judicial precedents. The need of the hour is to bring a delicate line or a clarifying system to enable the patenting of software or computer programmes that include certain other things, ancillary thereto or developed thereon since a mathematical or business method or a computer programme are per se excluded from patenting. A radical approach was adopted by reiterating that section 3(k) bars only ‘computer program per se’ and not all inventions based on the computer programs in Ferid Allani vs. Union Of India &Ors by the Delhi High Court, which shows a liberal attitude of patenting software.
Now, it is time to evolve a developed body of jurisprudence that removes ambiguous language in the Act and enables to provide statutory protection for software together with effective implementation. Comprehensive legal reform is something that requires careful deliberation and a good deal of knowledge.
[ii] Inserted by The Patents (Amendment) Act, 2002, Act no. 38 of 2002.
[iii] W.P.(C) 7/2014 & CM APPL. 40736/2019.
[iv] Tata Consultancy Services v. State of Andhra Pradesh, (2005) 1 SCC 308.
[v] The Indian Patents Act, 1970, sec 2, cl. m.
[vi]The Patents (Amendment) Act 2002 (No. 38 of 2002).
[vii]Supra note7, sec 2, cl. 1, sub. cl. ac.
[viii] Guidelines for Examination of Computer Related Inventions (CRIs), Office of the Controller General of Patents, Designs and Trademarks, 2017, available at: http://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_86_1_Revised__Guidelines_for_Examination_of_Computer-related_Inventions_CRI__.pdf (last visited on Feb. 21, 2021).
[ix]IPAB, Original Appeal No. /26/2009/Pt/Del | 05-07-2013.
[x]IPAB, Original Appeal No. /22/2010/PT/CH | 08-12-11.
[xi] I.A. No. 6735/2014 in CS(OS) No.1045/ 2014.
[xii]Supra note 5.
[xiv]Supra note 5, para 5.
[xv]Supra note5, para 10.
[xvi] Report of the Joint Committee presented to the RajyaSabha on 19th December 2001 and laid on the table of LokSabha on 19th December 2001.
[xvii]Supra note5, para 11.
[xviii]Supra note5, para 13.
[xix] Andres Guadamuz Gonzalez, “The Software Patent Debate”, Journal of Intellectual Property Law and Practice 1 (2006), available at: https://www.wipo.int/edocs/mdocs/sme/en/wipo_unido_smes_msk_07/wipo_unido_smes_msk_07_www_73624.pdf(last visited on Feb. 21, 2021).
[xx]YogeshSuman and V K Gupta, “Patenting Issues in Software Industry”, 7 Journal of Intellectual Property Rights 516 (2002), available at:
http://docs.manupatra.in/newsline/articles/Upload/C1B6D37C-85F7-491B-B145-0B9ED42DB9E7.pdf (last visited on Feb. 21, 2021).