Article by Kailash Choudhary and Rangoli Nigam1
The businesses around the world are depending more and more on technology these days. The importance of software therefore can hardly be undermined. Thus it has become increasingly important to provide legal protection to the intellectual property in software. Patenting of software is one of the most desired methods of procuring such legal protection. However, various jurisdictions take varied stands for granting patents to software.
This article aims at providing an introductory overview and comparison of the legal provisions governing the patenting of software in the United States, the European Patent Office (EPO) and India.
POSITION IN U.S. FOR PATENTING OF SOFTWARE
U.S Patent and Trademark office (USPTO) grants patents for softwares. However, this was not the case always. The patent office, in the year 1968 issued guidelines which stated that a computer process could not be patented either as an apparatus or as a process. As per these guidelines, patents could be granted only if an invention, in relation to computer programs, would produce results in combination with computer and non obvious elements.
In the case of Gottschalk v. Benson2, US Supreme Court held that an algorithm to convert binary coded decimal numbers to true binary numbers was not a patentable invention since algorithms are mathematics. The US Supreme Court equated mathematics to abstract ideas and abstract ideas cannot be patented.
In the case of Parker v. Flook3, US Supreme Court held that a method for updating the alarm limit in a catalytic conversion process was a mere 'post solution activity' hence it was not patentable.
However, in the case of Diamond v. Diehr4, USPTO for the first time granted the petition for grant on software. In the instant case, the invention was for a computer determined and controlled heating of rubber for its best curing. The Supreme Court held that the invention was not just a mathematical algorithm but also a process including steps to cure rubber hence was a patentable invention. Even if the only feature added in the invention was the calculation of timing, it was held to be patentable.
In re Bilski5, the United States Court of Appeals for the Federal Circuit (CAFC) laid a single test 'machine or transformation test' for the patentability of processes. It said that a process can be patented if
- It can be performed on a particular apparatus ;
- The process is capable of transforming an article into a different state.
The US Supreme court later revised and upheld the Bilski decision but also declared that the 'machine or transformation test' was not the sole test, patent applications should be subjected to.
POSITION IN EPO FOR PATENTING OF SOFTWARE
European Patent Convention provides that 'programs for computers' as such cannot be considered as patentable inventions. The EPC does not define an invention, however in its Article 52 (2), it provides a list of inventions that shall not be regarded as an invention. The list includes:
- Discoveries, scientific theories and mathematical methods;
- Aesthetic creations;
- Schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
- Presentations of information.
As per the current position of the EPO concerning the patentability of software, only such software can be granted a patent which provides a 'technical effect' which is beyond the normal output from the interaction between the computer and a process.
The Examination Division examines the application for patent. The invention is examined on the basis of:
- Novelty and ;
- if it has an inventive step.
The novelty of an invention can be established by ascertaining that the invention was not publicly known prior to the filing of the application. After establishing the novelty, the invention is examined if the output obtained has an inventive step and is beyond the obvious results. Section 56 reads as follows with regard to inventive step:
"An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step."6
Thus, while software could have an inventive step, that is, it provides a technical result but still it could be an obvious one. In the case of Two identities/COMVIK7, Board of Appeals held that while establishing non obviousness, it should be so to a person skilled in the relevant field of technology. The application to the EPO should establish a technical problem which the invention seeks to provide a solution for. Also, the technical feature of the invention should be able to provide a non obvious solution to the technical problem.
POSITION IN INDIA FOR PATENTING OF SOFTWARE
The Indian Patents Act does not mention that what software shall be patentable. However, Section 3(k) of the Act provides for software which cannot be patented. It provides under section 3(k) "a mathematical or business method or a computer program per se or algorithms"8 cannot be patented. In 2004, attempts were made to include "section 3(k) a computer programme per se other than its technical application to industry or a combination with hardware". 9 However, the said modification to the instant section was rejected by the Parliament. Hence as per the current provision, "computer programs per se" are excluded from the purview of patents. It is not clear if software when applied to a computer can be patented. The recent Manual of Patent Office Practice and Procedure (2011), however clears the interpretation that software when applied to a computer apparatus shall be patentable is an incorrect interpretation of the Section 3(k). The manual states that:
"If the claimed subject matter in a patent application is only a computer programme, it is considered as a computer programme per se and hence not patentable. Claims directed at computer programme products are computer programmes per se stored in a computer readable medium and as such are not allowable. Even if the claims, inter alia, contain a subject matter which is not a computer programme, it is examined whether such subject matter is sufficiently disclosed in the specification and forms an essential part of the invention."10
To provide a clearer understanding of the law regarding patenting of software, Indian Patent Office issued draft guidelines for the examination of Computer Related Inventions (CRIs) in June 2013. The guidelines provide the examiners of the Patent Office the method of analyzing the merit of the patent application for patenting software. The claims for computer related inventions are categorized as follows:
- Computer program product
- Computer readable medium
In Vicom/Computer-related invention11, it was held that an image processing method which involved mathematical method for the handling of data representing an image to achieve the technical effect of an enhanced quality of image was a patentable invention.
More recently in Electronic Navigation Research Institute Vs Controller General of Patents12, the invention was a mathematical method for evaluating time series signals. Patent to the said invention was denied on grounds that a mathematical method cannot be patented even if it produces a technical effect as it is falls within the ambit of Section 3(k). Intellectual Appellate Board (IPAB) relied on the judgment in Yahoo v Controller of Patents13, where it was held that 'the inventive step' is the subject matter of the application for patent of software, hence should not be excluded in Section 3(k).
USPTO and EPO have varying standards for patenting of software. The US has a much more liberal approach and states that inventions in relation to software are patentable if it is capable of transforming the input into some useful output. The EPC, on the other hand, grants patents to software but has a much more stringent approach. Software shall be granted patents by the EPO if it is non obvious to a person skilled in the relevant field of technology and also has a 'technical effect'.
Software patenting standards in India also state that patents shall be granted to those computer related inventions which are based on a technical process. Hence the basis for granting the patents to software in India is not the Computer program per se but the technical result that the process can obtain.
1. Student of BBA. LLB, 4th year, Symbiosis Law School, Pune.
2. 409 U.S. 63 (1972)
3. 437 U.S. 584 (1978)
4. 450 U.S. 175 (1981)
5. 545 F.3d 943
11.  1 OJEPO 14 (T208/84)
12. http://18.104.22.168/decision/3624-DELNP-2005-212/3624-delnp-2005.pdf for Patent Application 3624/DELNP/2005.
13. IPAB, OA/22/2010/PT/CH.
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