India: Need ‘SoftPatents' for Software Inventions

Last Updated: 24 April 2017
Article by Gaurav Arora

At the outset, I would take this opportunity to congratulate the Indian Patent Office for coming up with the guidelines for 'Computer Related Inventions (CRI)[1].' More so, because they did not call it 'Software Patent Guidelines.' That would have been a misnomer and a paradox drawing huge criticism. The Patent Office hit the bull's eye with the title for the guidelines at least, by calling it Computer Related Inventions and not Software Patents. The term software patent confuses a novice and he inevitably thinks that the issue revolves around bringing software protection from the purview of Copyright Law to Patent Law.

So it will be only apt to set the terminology right. In common parlance, when a patent attorney is talking about software patents, he is actually referring to an invention which is related to a computer in some way or the other, and has software as one of the essential features. Software, in simple terms, is an algorithm or a method written in the language of computers. Software per se, stand alone, is not a patentable subject matter. So when a 'Patent' Attorney talks about software patents, he is actually impliedly referring to inventions that have software as an essential element and definitely something more than the software, which makes the invention an 'invention.'

This 'something more' need not be only another explicit tangible element in the invention. The 'something more' can lie in the unique interaction between the software element and the tangible elements of the invention. Let us look at a few old cases wherein the courts decided upon the existence or absence of that 'something more.'

In Diamond v. Diehr[2], the invention used a computer to calculate and control the heating time for curing rubber. The patent was granted even though the only feature of the invention was controlling the timing by the computer. What saved Diehr seems to be the inevitable interaction between the method of curing rubber and the computer. The invention was seen as a whole and the software was just a part of the bigger picture.

On the contrary, in Parker v. Flook[3],  a computer was being used to set alarm limits for a catalytic process. This was rejected because the only feature was the alarm setting algorithm. Since, algorithms come under the 'abstract ideas' exception to Section 101, this patent application was rejected. Once the algorithm was assumed to be in the prior art, there was 'nothing more' in the invention.

In Muniauction, Inc. v. Thomson Corp[4], the patent was directed to a known process of issuing and reselling bonds using a web browser. The patent was rejected because the process of selling bonds is known and the mere fact that it is being performed over a web browser does not make it patentable. The web browser is not linked or interacting with the bond selling process in a way which might be different from how it will interact with any other selling process or any process for that matter.

Effectively, the same rule as in Alice is reiterated everywhere:

a computer system merely 'configured' to implement an abstract method is no more patentable than an abstract method that is simply 'electronically' implemented

The courts will guard against pre-empting the use of an abstract method just because someone says, 'Implementing on a computer,' or 'computer readable media.'

Mere drafting of a patent application by camouflaging it as a product or computer media cannot save the invention if it is an abstract idea per se and nothing more. In Mayo[5], the court criticised:

the claimed processes are not patentable unless they have added features that provide practical assurance that the processes are genuine applications of those laws rather than drafting efforts designed to monopolize the correlations.

But poor drafting can definitely put an otherwise patentable invention into trouble. 'Bring it more into physical world,' as they say.

Even when the 'software patent' is well drafted, it is the complete invention encompassing the software which gets protection and not the software per se. Suppose a claim which has been granted, has six elements, A to F:

  • A-C are not related to computer/software
  • D-F are computer related elements
  • F is an algorithm implemented over a computer

Here, F standalone, which is the software element in the claim, has not been extended any protection per se. It is the invention as a whole embodied in the claim which is protected when the claim is granted. But F standalone has no value as such because its sole purpose in the claim is to interact with other elements. It will not be sold standalone. It will not function standalone. Its existence derives its meaning from its relationship with the other elements.

Idea: IP laws were never directed to the protection of ideas per se. When there was an attempt to crossover that line, the SCOTUS unequivocally laid down that everything is patentable under the sun except for abstract ideas, laws of nature and natural phenomena. An idea is neither patentable nor copyrightable. Manifestation of the idea in the form of a product or process is the subject matter of patent law and expression of the idea is the subject matter of copyright law. Copyright does not allow monopolisation of the idea manifested in the form of an expression[6].

Idea + Creativity = Expression ...Copyright-able

Idea + Creativity = Product or process ... Patent-able

The objective behind IP laws (copyright and patent law) is to incentivise[7] this creativity which adds onto the idea and creates an expression, product, or process.

Having said all that, I feel that the creativity involved in software products such as mobile apps, word processors, games and social interacting means (facebook, chat apps, team viewer), is not getting enough protection by the requirement of law of manifestation in the form of an expression, product or process.

Orkut was created well before facebook. Messengers like Msn and yahoo were up and running even before whatsapp was created. Orkut died a natural death and people rarely use msn or yahoo messengers even when they come preinstalled on their devices. What worked for facebook and whatsapp? the interface, the idea of likes, the idea of double blue ticks! There was some creativity in these things, not manifested as a copyrightable expression or patentable product in all the aspects, but at least somewhere else, which made them work so well.

On the flip side, had the idea of messenger or orkut been monopolised, say by way of a patent, it would have taken another 20 years before the world could become addicted to facebook and whatsapp.[8]

Still, revolutionary ideas manifested in the form of facebook and whatsapp need some form of protection. The idea is to provide an environment where we give protection to the creativity, so that our innovators don't feel demotivated and at the same time keep the basic tools of scientific and technological work[9]: abstract ideas, natural laws and physical phenomena free to all men and reserved exclusively to none.[10]

With the advent of the printing press, came the need for Copyright Laws because making a copy of something became very easy. The effort required in making a copy, which was previously done by hand, was reduced to zilch. A copy could be created at fraction of the cost/price[11] of the work. Again, when the technology of video recording and live streaming was created, the law had to be modified or at least clarified to cover those aspects. With the advent of industrialisation[12], patent law was required to protect the innovators.

Who knows, some years later if someone invents a machine which can exactly replicate a food dish, we will feel the need to write a Food Copying Protection Act. Three-D printer is already a reality. Do we need a 3-D Copying Protection Law? Does the Copyright Law protect 3-D printing?

The kind of creativity involved in the Information Technology field, requires a revisit of the IP laws and we need to come up with a hybrid protection instrument - something similar to innovation patents and utility models, perhaps a softpatent. Till the time we do that, let us keep looking for that inventive step in 'software inventions' and file patent applications for Computer Related Inventions.


[1] February 19 2016: the Office of Controller General of Patents, Designs and Trade marks (Indian Patent Office or IPO) issued a revised set of Guidelines for Examination of Computer-Related Inventions ('CRI Guidelines)'

[2] Diamond v. Diehr, 450 U.S. 175 (1981)

[3] Parker v. Flook, 437 U.S. 584 (1978)

[4] Muniauction, Inc. v. Thomson Corp., No. 07-1485 (Fed. Cir. July 14, 2008)

[5] Mayo v. Prometheus, 132 S. Ct. 1289 (2012)

[6] Idea-expression dichotomy: Where it is not possible to express the idea in any different form, the copyright does not subsist.

[7] by rewarding a limited period of monopoly

[8] Which, on a lighter note, would have been better and actually saved us a lot of time in our lives but that's an entirely incongruous take.

[9] "Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972).

[10] Einstein could not patent his celebrated law that E=mc2.; nor could Newton have patented the law of gravity. Such discoveries are `manifestations of . . . nature, free to all men and reserved exclusively to none.'" Diamond v. Chakrabarty, 447 U.S., at 309

[11] Price/cost – a free market would pay to read the piece of writing.

[12] When manufacturing processes and machines became standard equipment which any one could install for a cost and start manufacturing any new product by reverse engineering.

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