India: Considering Patentability Of Software

Last Updated: 14 January 2015
Article by Zoya Nafis

The legal scenario regarding the patentability of software-related inventions has changed dramatically over the last few decades. In today's era, the protection of technology and technological developments cannot be guaranteed by looking backwards. Country's economic development and innovation depends largely upon the digital environment as it has become one of the promising areas of producing wealth and generating economy.

Economists consider patent protection as a trade-off between the need to encourage innovation and the necessary evil of allowing temporary monopoly to the innovator who invests his labor and time in the invention. Although the patentability of software is unsettled till date, no one can deny the relevance of software in today's world. There are some who argue that software is so fundamental that our society should not allow anyone to own it to the exclusion of others. Some are satisfied in treating software as copyrightable literature, affording protection only to its expressive, but not its functional aspects. Some argue strongly that the patent system which has existed since late eighteenth century is outdated and cannot handle this new technology and that some are different, sui generis, form of protection should be created for software technology. Others argue that the current patent system is working fine and that it will adapt to this new technology, just as it has done many times before.

In many countries, the patentability of software remains uncertain and often involves manipulation of the patent claims. Patenting inventions pertaining to novel industrial processes, installations, or equipment that incorporate computer technology has never been seriously questioned. But if the novelty resides solely in the computer programs, difficulties can be expected unless the claims are couched in proper terms. If the invention is pure software then the task of preparing a set of acceptable claims, while still providing the full measure of protection for the invention, becomes formidable, if not impossible. Yet some of the greatest inventions of our times reside in the field of computer software.

As the overwhelming development, majority of countries have established patent systems, there is universal recognition that a system is needed to support and foster innovations in industry. When innovations are quickly emulated, the incentives for R&D are substantially diminished. Particularly benefited by patents are industries where large capital is required, such as the biotechnology. However, also benefited are fields' innovations are easy to reverse engineer or replicate, and trade secret protection is difficult. Consequently, software industries have real need of such protection.

What the World is doing

Most of the jurisprudence relating to software patents has originated from U.S., which is considered as the cradle of software patents. Beginning with the landmark decision of US Supreme Court in Diamond v. Diehr,1 in which the Court ordered the Patent office to grant a patent for an invention even though it involved the utilization of computer software, the US Supreme Court has traveled a long distance with regard to software patents.

Considering the position in the European Union, it is evident 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.2

U.S. Court recognition to software patents created a substantial divide in international patent law. Without regard to pragmatic considerations, U.S. courts so far have seen no reason under law to constrain the recognition of software patents. By contrast, Europe and Japan have both attempted to limit the negative social welfare implications of expanding patent recognition by legislatively prohibiting non-computer-implemented business method patents and imposing limitations on the patentability of software. The broad recognition of the patentability of all types of business methods by U.S. courts, including the recognition of non-technical or non-computer-implemented business methods, is the source of significant social welfare losses in the U.S., Europe and Japan's attempts to draw a line between high and low quality business method and software innovations better balance the need to stimulate innovation while preventing unnecessary anti-competitive or overly broad patent recognition. Furthermore, the lack of consistency and harmony among members of the Trilateral Patent System due to the U.S. recognition of business methods increase the costs of engaging in international business. After reviewing the current state of business method and patent system internationally, we conclude that the requirement of an inventive step found in Europe is superior to the U.S. approach. Although commentators have criticized the European approach for being opaque, the approach does a superior job of distinguishing between innovative and non-innovative-computer-implemented inventions. The U.S. approach does not promote efficiently and is extremely costly from social-welfare perspective. For these reasons, Europe and Japan are unlikely to follow U.S. lead in the treatment of business method and software patents.

While the European and Japanese approaches are not optimal, they come much closer to achieving optimality than does the U.S. approach. Therefore, it follows that the best possibility for international harmonization of business method and software patent law rests on reforming the U.S. Patent system in order to bring it into alignment with European Patent law. The U.S. adoption of an inventive step requirement for computer-implemented business method and software innovations and the creation of sui generis protection for non-computer-implemented business method would promote international harmonization while significantly increasing the efficiency of U.S. business method and software patent law. Less dramatic changes would also add to the efficiency of U.S. Patent law in this area. Strict enforcement of enablement and best mode disclosure requirements would reduce ambiguity and limit opportunistic behavior. Finally, creating a post grant third party opposition process would add an important error correcting mechanism that has proven effective in Europe and Japan. The reforms would significantly enhance the efficiency of U.S. business method and software patent law while achieving a higher level of international patent law harmonization.3

Indian Position

India is well known for its software industry which has grown incredibly in a short span of time. Today in the era of globalization, many top Multi-National Companies either do business in India or have research centers for promoting knowledge exchange and bringing in valuable foreign knowledge. Though India has done well in harmonizing patent law but software patent protection is weak and hence, there is a need for strong patent protection. But the drawbacks software patents should be considered carefully. Software Patents do not encourage innovation; rather they lock up key innovations and encourage large corporation monopoly. The Indian Government should seriously think about what its position on software patents should be. India could maintain the status quo; or could allow patents with strong safeguards against frivolous patent claims, and possibly with a greatly shortened life span.

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.

In 2008, the Patent Office published a new 'Draft Manual of Patent Practice and Procedure' in which certain method claims for software inventions were allowed to be patented. This Draft, however was withdrawn from circulation, with Shri N.N. Prasad (then Joint Secretary of DIPP, the department administering the Patent Office) noting that the parts of the Manual on sections 3(d) and 3(k) had created a lot controversy, and were ultra vires the scope of the Manual, which in anyway could not override the Patent Act. The Draft Manual relied heavily on the interpretation of U.K. courts in regard to the patentability of software.

In India we still need to wait for the new guidelines by the patent office in regard to Software inventions as the earlier guidelines were opposed by software industries and the legislators. The present Patent Act by using the term 'Computer per se' has open way for software patent to some extent. The law still has to develop in this regard. India should catch up with the world in matters relating to software patents to avoid any back log as it suffered in many other cases. We can only wait and hope for a dramatic turn in this particular field.

Endnotes

1 450 U.S. 175 (1981), Diamond v. Diehr

2 Eloise Gratton, Should Patent Protection be Considered for Computer Software-Related Inventions;

3 Duncan M. Davidson, The Future Of Software Protection: Common Law & Uncommon Software;

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 Mondaq.com.

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

Authors
Zoya Nafis
Similar Articles
Relevancy Powered by MondaqAI
Khurana and Khurana
Vaish Associates Advocates
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Khurana and Khurana
Vaish Associates Advocates
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions