A Comparative Analysis Of Patenting Software Related Inventions

2nd June, 2023 - 6:52 am Categories: Patents 0 Comments

Introduction

The dispute over software patents focuses on two issues: first, whether computer software is patentable, and if so, what should be the boundaries of patent protection. There are variances on both of these fronts, but in the interim, major patent offices throughout the world have granted several software patents, leading to the development of various examination guidelines and case laws, which has led to a variety of standards of protection. Despite the fact that there is no accepted meaning of the term “software patent.” A software patent, according to one definition put out by the Foundation for a Free Information Infrastructure, is a patent on any computer performance achieved by procedures for a computer programme. Software designs and concepts are protected by software patents. Software subsequently incorporates these concepts. A particular patent may prevent others from developing software that performs a function in a specific way or from using a certain set of computations.

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The rapid development of software from a scientific and mathematical calculator to a pervasive product that has permeated practically every element of contemporary technology and living is the cause of the complexity and confusion surrounding software patents. Software has long since been seen as a sticky situation in terms of patent law. The software is a theoretical innovation, as many have noted, but original ideas are not eligible for protection. By conducting a comparative analysis between the USA and India, this paper investigates what that means, the enforceability of software patenting, and judicial approach towards software patenting.

The Patent Amendment Act of 2005 intended to establish software patents in India. The Patent Amendment Act of 2005 proposed a change to clause 3 (k) to include “a computer programme per se other than its technical application to industry or a combination with hardware; a mathematical approach or a business method or algorithm.” However, the Indian Parliament rejected this revision and opted to keep section 3(k) in its original form. The ordinance’s requested modifications were retracted. As stated explicitly in the Patent Act, computer software as a whole is not patentable. It could also be argued that the provision stating that software itself is not patentable means that only software that is a component of a larger invention, of which it is a part, could be taken into consideration for a patent as a whole, provided that it satisfies the Act’s requirements for a patent.

This demonstrates that under Indian law, software “standing alone” is not patentable. A software programme does not become an invention simply by being equipped with ordinary data processing machinery. The innovation can only be patented as a whole if the software application is a component of a sizable system and the system as a whole is patentable. The requirement that computer programmes are “per se” not patentable is found in Section 3 (k). What does “per se” actually imply here? In accordance with the Joint Committee’s 1999 report on the Patent (Second Amendment) Bill, “The addition of “per se” was suggested since occasionally the computer programme may incorporate other items that are related to or built upon it. If they are inventions, there is no desire to deny them a patent. However, it is not designed to give patents for computer programmes as a whole. The change was suggested to make the goal more clear.” Following the stance taken by courts in the EU and the UK, the Delhi High Court’s ruling in the Ericsson v. Intex case made it apparent that computer-related inventions with a technical contribution or technical effect are patentable in India.

Until 2015, there was no consistency among India’s four patent offices (Kolkata, Mumbai, Delhi, and Chennai) on the topic of granting software patents. This was also underlined by the Intellectual Property Appellate Board (IPAB) in the case, Yahoo v. Controller. It was discovered that, in the  absence of any regulations on the subject of patents on computer-related inventions (CRI), some patent offices were inclined to grant software patents while others were not . The Controller of Patents published CRI recommendations in order to eliminate irregularities in the award of software patents in India. Reviewers may depend on the following three-stage test for evaluating CRI applications, according the CRI Guidelines of 2016: If the contribution is only a mathematical, business, or algorithmic method, the claim should be properly construed and rejected. If the contribution is a computer programme, the claim should be checked to see if it is being made in conjunction with any novel hardware before moving on to other steps to determine the patentability of the invention. A computer programme cannot ever be patentable in and of itself. Deny the claim if the only contribution is made by the computer programme. Continue to the next steps in the patentability process if the contribution is found in both the computer programme and the hardware. 2016 criticisms prompted the creation of revised CRI standards for 2017. The elimination of the prior guidelines’ three-step examination method is the most significant aspect of the most recent guideline. Recent documentation makes no mention of novel hardware for patent awarding. Even subtle or implied references to hardware have been deleted as a result of the thorough rewriting process. The 2017 rules simply provide clarification to the patent office’s prior recommendations, according to the official viewpoint of the Indian Patent Office as stated by PTI. There has been no change in the policy of patenting CRIs.

To begin with, US courts viewed software patenting with suspicion and have repeatedly ruled that it is not patentable under US law because it is simply a mathematical formula. The Court later altered its mind, stating that the innovation should be viewed as a whole and that patent protection shouldn’t be withheld only because it involves mathematical formulae as a result of Diamond v. Diehr. But there were still two exceptions: the first was the exception for mathematical algorithms, and the second was the exception for business methods. In Diamond v. Diehr, the patent application described a better way to cure rubber by employing a computer to repeatedly recalculate the ideal curing time using a predetermined formula. It was decided that the patent claim did not attempt to anticipate the use of mathematical calculations and instead described a method for curing rubber, which was obviously an industrial process covered by the Patent Act. The Court concluded that the subject matter was not non-statutory simply because a computer programme and a mathematical equation were present. In order for software to qualify for patenting, it must perform a practical application and be more than just a manipulation of an abstract idea, as is clear from case law.

Conclusion

The degree, mechanism, and extent of software protection vary greatly around the globe. Despite the fact that TRIPS protects computer software with copyrights, it has been contended that it implicitly also protects patents. The law relating to software patenting has mostly been formed by local courts and legislators, which in turn have been heavily impacted by their own interests, as a result of international processes’ inability to harmonise it. Through this article, we can clearly observe the conflicting viewpoints that exist in the US and India, which have had a significant impact on the entire world. The United States, on the other hand, appears to give patents to “anything under the sun invented by man.” India, on the other hand, has traditionally maintained a stringent stance. The preceding section shows that the scope of software patentability varies. As a result, although India places a strong focus on “technological advancement,” the US has taken a more lax stance and expressly permits the use of a formula.

Author: Tanya Saraswat, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References

• Ravindra Chingale and Srikrishna Deva Rao, “Software Patent in India: A Comparative Judicial and Emperical Overview”, 20 Journal of Intellectual Property Rights, July 2015
• Terrell on the Law of Patents, 18th Edition, Sweet & Maxwell (Thomson Reuters), 2016