Kolkata Patent Office Meeting: No "Technical" Software Patents

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The last round of the stakeholder’s meeting to discuss issues around the patent draft manual concluded on 22nd of November in Kolkata. Since I am now based in Kolkata, I had the good fortune of attending this meeting and witnessing the interactions first hand.
It was reasonably well attended, with the majority of the audience from Kolkatta based law firms. It was chaired by Mr NN Prasad, named by MIP as one of the 50 most influential IP figures this year. Ever since taking over as the joint secretary at the Department of Industrial Policy and Promotion (DIPP), the department that oversees the functioning of the Indian patent office, Mr Prasad has lent some much needed dynamism to IP policy making in India.

One of the highlights of this meeting was Mr Prasad’s specific instructions to his drafting committee team to remove most of the statements in the manual that attempted to somehow induct foreign case law (particularly the word “technical”) whilst interpreting section 3(k) dealing with the patenting of software.

Readers may recollect an editoriral in the Mint, where I argued that it would be a disaster for India to co-opt the rather tortuous norms evolved by UK and EU courts in their bid to grant software patents, even when their statutes clearly prohibited such grants. I had noted then that:

“… till such time as the software patent exclusion remains on our statute book, it ought to be adhered to and respected. India must avoid buying into the tortuous interpretative process that has characterized American and European jurisprudence on this count.”

I brought all of this to the notice of Mr Prasad during the course of the meeting, as also the fact that the current manual appears to suggest in several places that any software that is somehow “technical” would merit patent protection. As I’d noted in the Mint editorial:

“One is hard-pressed to think of any software program that might fail this “technical contribution” test, particularly when a patent application covering such programs, is crafted by a clever patent attorney.

Indian judges ought to eschew such legal casuistry in favour of a simple straightforward reading of section 3(k), which excludes computer programs per se from patentability.”

Mr Prasad clearly reiterated that the Manual was only meant to provide general guidance and that legal interpretation around contentious issues ought to be left to the courts.

I hope to do more posts to bring out other aspects of the discussions that transpired during this patent stakeholders meeting. So watch this space for more.

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Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

3 comments.

  2. AvatarUtsab Banerjee

    With my experience in software industry and now as a would be patent attorney I feel that software is best protectd under copyright.Especially after the decision of Computer Associates v Altai Inc case, which lays down the exact mode of protection for software under copyright, I think it is redundant for India to move into a patent regime for softwares. During my working days in the industry I felt that generating inventions in computer codes is much easier than in other field of technology. So why create a dangerous mine field of patents in softwares, where inevntion is a day to day work of the developers. Practically softwares are “too technical for copyright and too literal for patents”. So a sui generis system may be a good alternative.
    Another good reason for not moving into a patent regime is that most of the Software industry in India is service based. We basically do not generate much IP in this field as the global major software product companies like Microsoft or IBM(Indian majors like TCS and Infosys combinedly do not have more than 500 patents whereas IBM files more than 5000 patents a year). So why sould we move into a strict software regime which may be detrimental to the growth of small service based industries in this sector.

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