Chadha & Chadha - India
In India, computer-related inventions can be protected under the Copyright Act and the Patent Act. While computer software is protectable as a literary work under the Copyright Act, the scope of protection granted is narrow. Inventors therefore prefer patent protection for this type of invention, since it provides broader and stronger protection and affords protection to the basic concept behind these creations.
The protection of computer-related inventions is one of the most debatable and contentious issues in India and worldwide. Patentability for this type of invention in India is laid out in Section 3(k) of the Indian Patents Act and the Guidelines for Examination of Computer-related Inventions published by the Indian Patent Office (IPO).
Current position in India
Section 3(k) of the Patents Act states that a mathematical or business method, a computer program per se or algorithms are not considered to be inventions. However, it does not impose a blanket ban on patenting computer-related inventions in India. Thus, inventions that disclose computer programs per se may be barred under the provision of Section 3(k), but inventions containing computer programs or software, that are not just computer programs may be patentable. Any invention needs to first satisfy the basic requirement of novelty, inventive step and industrial applicability in order to be protectable.
Although the term ‘per se’ has not been defined conclusively in Indian law, it has been widely debated. The legislative intent to attach the suffix ‘per se’ to computer programs is evidenced by the following view expressed by the Joint Parliamentary Committee while introducing the 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 patent if they are inventions. However, the computer programmes as such are not intended to be granted patent. This amendment has been proposed to clarify the purpose.
Guidelines for examination of computer-related inventions
To date, the IPO has released three sets of guidelines in an attempt to bring clarity to the examination process for computer-related invention patents. In 2017, the office released the most recent guidelines, under which the substance or nature of the claims determines the technical nature of the invention and “the focus should be on the underlying substance of the invention, not the particular form in which it is claimed”. These guidelines adopted a more flexible approach, wherein computer-related inventions that have a technical effect and technical contribution can be patentable subject matter.
In the Delhi High Court’s recent landmark ruling in Ferid Allani v Union of India, the court adopted a liberal approach and reiterated that the test for determining patent eligibility is “if the invention demonstrates a technical effect or a technical contribution it is patentable even though it may be based on a computer program”. Thus, not all inventions that are based on a computer program are unpatentable and since many inventions today are based on computer programs, it is “retrograde to argue that all such inventions would not be patentable”. The court proposed that the “words ‘per se’ were incorporated so as to ensure that genuine inventions which are developed, based on computer programs are not refused patents.” Further, only computer programs ‘per se’ are excluded from patentability. The court also observed that the IPO’s restrictive approach is contrary to global practices and that Indian practices must align with the global standard. The court set forth the proposition that technical effect or technical contribution should be determined in light of the guidelines, legislative material, judicial precedents and international practices.
When drafting an application, the following should be ensured:
- the terms used in the claims and specifications should be consistent and as much as possible, each method claim must be tied up with the respective hardware or a tangible software component; and
- claims and specifications should be linked to technical effect or technical contribution, wherever suitable.
Further, recent patent grants by the IPO indicate that software inventions may be patentable, if the following conditions are met:
- there is technical advancement in the invention over the existing prior arts;
- the invention provides a technical solution to a technical problem by providing a practical application; and
- there is an improved technical effect of the underlying software.
It is evident that the issue surrounding the patentability of computer-related inventions is rooted in the misinterpretation of the language of Section 3(k), court and IPO decisions and the IPO’s guidelines. In view of this, there has been a definite upsurge in the filings of computer-related inventions in India by several leading national and foreign companies and the IPO has been granting more patents for these inventions. The constantly evolving practices adopted by the patent office as well as the Indian court decisions with regard to interpreting the language in Section 3(k) are indicative of the intention to make the Indian patent regime consistent with global practices and standards.