India: Patentability Of Software: A Comparative Analysis In Various Jurisdictions

Last Updated: 1 March 2014
Most Read Contributor in India, September 2016

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.


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

  1. It can be performed on a particular apparatus ;
  2. 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.


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:

  1. Discoveries, scientific theories and mathematical methods;
  2. Aesthetic creations;
  3. Schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
  4. 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:

  1. Novelty and ;
  2. 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.


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:

  1. Method/process
  2. Apparatus/system
  3. Computer program product
  4. 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. [1987] 1 OJEPO 14 (T208/84)

12. for Patent Application 3624/DELNP/2005.

13. IPAB, OA/22/2010/PT/CH.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.