[The Viewpoint] Software patents: An Indian perspective

Software is the driving force behind current developments across the automobile, healthcare, manufacturing, networking and telecom sectors. In addition, software programs have helped in developing cutting edge technologies such as artificial intelligence, machine learning, Internet of Things (IOT), blockchain and cognitive computing.

Typically, software programs are protected via copyright law. However, copyright law fails to safeguard the technical aspects or functionalities of a software program. A broader form of protection is guaranteed by patent law. However, patentability of software programs or Computer Related Inventions (CRI) has been a subject of major confusion in various jurisdictions.

It is well-known that a patent is an exclusive territorial right granted to an owner of an invention to exclude others from making, using or selling a patented product or process for a limited time period. Therefore, when a patent is used strategically, it can act as an important tool to provide a competitive advantage to the owner in the market. In the absence of patent protection for software-related inventions, it becomes almost impossible for the owner of the invention to prevent others from making, using or selling the invention, since the nature of software is such that once it is in the public domain, in most situations, it can be reverse-engineered and even replicated.

Indian perspective

In India, there is this notion that software-related inventions are not patentable. Hence, inventors and companies generally do not explore the possibility of protecting these inventions before launching them in the market. In this regard, we come across a lot of innovative software inventions that are unprotected in the market, which in the long run may dilute the market for the owners of the software, since any third party can use or replicate the same and market the software using their respective identities. In this regard, there is a need to closely examine the provisions under the Patents Act, 1970 in order to clearly demarcate what is patentable and what is not patentable.

According to Section 3(k) of the Act, a mathematical or business method or a computer programme per se, or an algorithm, is not patentable. The term “per se” is not defined in the Act. However, the Computer Related Inventions (CRI) Guidelines of 2017 indicate that the term “per se” should be interpreted based on the general dictionary meaning. As per the general dictionary meaning, “per se” means “by itself”. In other words, a computer programme by itself is not patentable.

However, practically speaking, a computer programme cannot function by itself, and is required to be integrated into some hardware in order to obtain the desired result. Therefore, while drafting the patent application, it is very important to include hardware limitations in the description, claims and the drawings section of the patent application. Further, various Indian courts have expressed their views on various aspects of software patents, as highlighted below.

Ericsson v. Intex; Ericsson v. Lava

The Delhi High Court in Ericsson v. Intex, and once again in the more recent judgment in Ericsson v. Lava, held that,

“It should be noted that mere reference to the use of a 'procedure' or a 'method' or an 'algorithm' in an apparatus which comprises of various network or hardware elements, components etc. so as to bring about a technical effect or to perform a technical process does not reduce/makes the claimed invention an algorithm or computer program per se or even a mathematical method or formula as contemplated under section 3(k).‟

Further, the Court held that,

“...the bar of 3(k) does not apply when algorithms are employed by hardware components to produce a technical function. The Court went on to state that the suit patents were not computer programmes per se, abstract algorithms, or mathematical methods, and that prima facie, the inventions had resulted in an improvement, a technical advancement, and resulted in actual physical representation."

Ferid Allani v. Union of India

In a more recent suit, Ferid Allani v. Union of India & Others, the Delhi High Court has held that,

“...In today’s digital world, when most inventions are based on computer programs, it would be retrograde to argue that all such inventions would not be patentable. Innovation in the field of artificial intelligence, blockchain technologies and other digital products would be based on computer programs, however the same would not become non- patentable inventions - simply for that reason...”

Further, the Court stated that.

“...The meaning of “technical effect‟ is no longer in dispute owing to the development of judicial precedents and patent office practices internationally and in India...”

Even though the term “technical effect” is not defined in the CRI Guidelines of 2017 or in the orders indicated above, we should consider some of the examples cited in the Draft CRI Guidelines of 2013, which include “higher speed, reduced hard-disk access time, more economical use of memory, more efficient data base search strategy, more effective data compression techniques, improved use interface, better control of robotic arm, improved reception/transmission of a radio signal.

The UK Court of Appeals in HTC Europe Co Ltd v. Apple Inc defines the term “technical effect” as an invention which solves a technical problem within the computer will have a relevant technical effect in that it will make the computer, as a computer, an improved device, for example by increasing its speed. An invention which solves a technical problem outside the computer will also have a relevant technical effect, for example by controlling an improved technical process.

In the light of the above observations by courts, the following points are required to be taken into consideration while drafting applications for software-related inventions:

● Structural hardware features: Firstly, it is essential to ensure that hardware limitations are clearly illustrated in the description, claims and the drawings of the patent application. Further, during prosecution of the patent application, it is necessary to highlight to the Controller the hardware limitations included in the patent application.

● Solves a technical problem with a technical solution: It is pertinent to note that "technical problem" literally means solving a problem which is technical in nature. Solving a problem which is non-technical in nature by providing a technical solution will not qualify the claimed invention as a patentable subject matter. In particular, IPAB in Yahoo Inc v. Assistant Controller of Patents and Designs, held that “the claimed ‘invention’ “is nothing but doing the advertisement business electronically. Even the technical advance that is claimed over the existing art is only an improvement in the method of doing business and S.3(k) is clear that business method cannot be patented, the fact that there is an advance has not improved the case”. In other words, providing a technical solution such as mere automation of an existing business practice being a non-technical problem, will not form a patentable subject matter.

Further, it is also important to note that the technical solution as claimed in the patent application should highlight steps which are unconventional/significantly different in nature from the steps generally carried out by a generic computer.

● Technical advancement over existing prior art: If the above parameter of the invention solving a technical problem with a technical solution is satisfied, then it is imperative that the invention is technically advanced over the existing prior art. In particular, if none of the existing prior art considered alone or in combination disclose the features of the claimed invention, then the claimed invention is said to be technically advanced.

● Real world technical effect: As discussed above, technical effect is the desired end result which could be derived from the claimed invention. It is more specifically termed as "real world technical effect" since the claimed invention should cater to a real world practical application.

It is also important to note that other major patent offices also follow almost a similar approach in evaluating software-related inventions for patentability. Therefore, it is advisable to always secure a product in the market in order to gain a competitive advantage.

Chinthan Japhet is an Associate Partner and Perzeus Abhas is a Senior Associate at Krishnamurthy & Co.