India: Do Software Patents Actually Fall Under The Ambit Of Section 3(k)?

Last Updated: 9 February 2018
Article by Avadhi Jain

Section 3k is often criticized for its ambiguity of the words "computer programme per se". Though the Indian Patent Act doesn't explicitly disallow software programs, a lot has been left to interpretation of the same, which in turn has been to many companies' benefit. This article will analyze the patentability of software programs with support of a few cases.

Earlier in Accenture Global Service GMBH v. Assistant Controller of Patents & Design and the Examiner of Patents where applicant sought for a patent on a method to generate a data mapping document. The objection against the method's technical effect being unidentifiable, the applicant submitted that the present claims recite "technical solution to a technical problem of need for a data document design system and design tools that addresses one of the most important technical challenges faced by database systems is data migration." After analyzing the inventions on merits, the Patent Office observed that the invention is not software per se, it is rather a system having web-services and software and thus, is not falling in the category of section 3(k) and patent was granted in May 2013.

In 2009, Facebook sought a patent on a method "for generating dynamic relationship-based content, personalized for members of the web-based social network". The objections against the grant was 'the method being nothing but an algorithm implemented through software thus falling under Section 3(k) and being non- patentable.' The applicant contended that section 3(k) was not applicable in this case because the invention "implements a technical process and has a technical effect" and further went on to explain the intricacy of the method. These amendments to the claims satisfied the Patent Office's objections and thus it granted the patent in February 2017.

Another patent was granted to Facebook on 25th April, 2017 "for a method of providing access to user profile data maintained by Facebook to third-party application". Facebook submitted that "the present invention included hardware limitation and provided technical improvements and benefits like checking privacy setting associated with the user profile and based on the privacy setting the access is provided to the third party application and the third party application personalizes the user content data." The Patent Office concluded that this doesn't fall under purview of Section 3(k), and duly granted it a patent.

In Feb 2005, Google sought for a patent on an invention titled, 'phrase identification in an information retrieval system'. One of the claims disclosed it to be a basic mathematical algorithm with the logical steps thus falling under section 3(k) of the Patents Act, 19701 and therefore not being patentable. However, Google reasoned that its invention is not an algorithm or a computer program per se, "but provides a technical solution to a technical problem of how to automatically identify phrases in a document collection". It claimed that the technical solution i.e. the end product which is an index, stored in a memory consisting of related valid phrases, is inventive. On hearing the above submissions, the Patent Office concluded that it is "a technical advancement over the prior art" and thus granted it the patent in May 2017.

In 2009, Apple applied for a patent on a 'method for browsing data items with respect to a display screen associated with a computing device and an electronic device'. The objections against the invention was that it was merely a software program and thus falling within the scope of computer programs per se i.e., under the provision of section 3(k) of the Act. Apple submitted that the method "although the steps of the method can be performed by means of software, the method constitutes a practical application of this computer software to produce a useful result bringing an improved technical effect while presenting advantages and overcoming drawbacks of hitherto known techniques." Accepting this submission, the Kolkata Patent Office granted the patent.

It is pertinent to note that the ambiguity regarding the provision under section 3k was cleared by the CRI Guideline 2016, which provided that Patents on computer programs can be conceded if the inventor demonstrates that the invention incorporates a computer program "in conjunction with a novel hardware. However, the CRI guidelines have failed to explain the term 'Novel Hardware'. Hence, the question regarding patentability of software still remains ambiguous. Also the position regarding the mathematical or business program remains the same, being a non-patentable subject matter. But looking at the practice followed by the Patent Office Office of granting the patents to softwares which can be considered as business method under section 3k of the Patent Act.

Footnotes

[1] http://www.iiprd.com/section-3-k-indian-patent-act-case-studies/

[2] http://ipindiaservices.gov.in/decision/830-CHENP-2009-29876/830chenp2009-GRANT.pdf

[3] http://www.financialexpress.com/industry/mark-zuckerbergs-facebook-gets-patent-in-india-for-creating-relationship-based-content/559789/

[4] http://ipindiaservices.gov.in/decision/6799-CHENP-2009-35703/6799-chenp-2009.pdf

[5] http://ipindiaservices.gov.in/decision/647-KOL-2005-36087/647KOL2005.PDF

[6] http://ipindiaservices.gov.in/decision/461-KOLNP-2009-36006/461KOLNP2009.PDF

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