Patentability of Software in India

Manisha Singh Nair

4 minutes to read

Software patents are one of the most contentious issues in Intellectual Property Rights worldwide, and increasingly, in India. The growing economic significance of computers and computer programs gives software patents this controversial status. It can be noted that after biotechnology patents, it is software patents which really attracts major public discussions onIP rights. This precisely was one of the reasons for the Indian Parliament to take cautioned steps with regard to software patents, while bringing in amendments to the Patents Act in 2005.

The increasing significance of software patents warrants further discussion about its protection in India. This discussion assumes special significance when we realize that software giants like Microsoft are holding about 6,130 patents till January 2005. As new and new software giants build up their research and develop centers in India we must also think about analyzing the protection given to the software.

A software patent is generally defined as a patent that protects some programming technique. The European Patent Office (EPO) defines a "computer-implemented invention" as an expression intended to cover claims, which involve computers, computer networks or other conventional programmable apparatus whereby prima facie the novel features of the claimed invention are realized by means of a program or programs.

Most of the jurisprudence relating to software patents emanate from US, which is considered as the cradle of software patents. Beginning with the landmark decision of US Supreme Court in Diamond v. Diehr, which ordered the Patent office to grant a patent on an invention even though a computer software was utilized in it, the US Supreme Court has traveled a long distance with regard to software patents. Today there is hardly any doubt about the scope of patenting of computer software and data structures in the US.

When we look at the European Union we see that software is patentable in EU, provided they make a technical effect. Though the European Parliament rejected the Computer Implemented Inventions Directive in July 2005, the position with regard to software patenting remains more or less the same in EU member states.

The position on software patents in India is close to that of EU member countries. If we are to search the definition of the term 'software' or 'computer programe' under the Patent laws in India, we shall not succeed. But the Copyright Act, 1957 defines a computer program under Sec.2 of the Act 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".

The Patents Act refers to computer programs in Section 3, which deals with inventions that cannot be patented. According to S. 3(k), a computer program per se is not patentable. This makes us think about what the term 'per se' stands for in this context.

According to the Webster's Encyclopedic Unabridged Dictionary, the term 'per se' refers to "by, of, for, or in itself; intrinsically". If we are to use this definition we can well assume that the software as such cannot be patented. But don't the same words of the provision tell us something more- that if the claimed invention is some thing more than'mere' software, it is patentable?

In India an attempt was made through the Patents Amendment Ordinance 2004 to further extend the scope of software patenting to any computer program that has industrial application and to those that are used in combination with hardware. But there was strong opposition within and out side the Parliament and as a result this was deleted from the subsequent Patents (Amendment) Act, 2005.

Still, an invention shall not become unpatentable in India merely because it was implemented with software. Like the EU countries, in India also the gaining of patent protection for software depends more on the drafting skills of the Patent Engineer. If the claims are drafted in such a way as to reflect that the invention is not software per se, it shall qualify for patent protection.

So far, the Indian Patent Office or Indian Courts have not got an opportunity to examine the legality of grant of patents to inventions involving software. This question is being keenly watched, not only by the Indian legal fraternity, but also by the software giants across the world that are slowly shifting their research and development base to India. This curiosity needs no other reason at times when we see sharp leaps in the number of patent applications filed by software giants in India. The best example would be the case of Microsoft, whose tally of 306 patent applications in India in 2004 was a five-fold increase from 67 patent applications filed in 2003.