Guest Post on Software Patenting in India


We bring you a guest post on software patents from Essenese Obhan, a leading patent attorney from New Delhi.

Essenese is the founding partner of an IP boutique, Obhan & Associates. Prior to founding Obhan & Associates in 2007, he worked for a number of years with Anand and Anand, India’s leading IP firm.

While Essenese himself is an expert on patents relating to the mechanical, industrial, software, and telecom sectors, the Obhan team includes associates that specialize in chemical, biotech, electronic, electrical, and nano technological inventions. The firm has a first of its kind proprietary automated application preparation system that streamlines and simplifies the application filing process. The firm also has a customized docket management system that efficiently tracks due dates.

Most importantly, the firm has a proprietary Indian patent and design database containing bibliographic data from 1980 till date that allows them to do freedom to operate searches in India in record time.

Essenese is listed as a patent specialist in Chambers 2009 and Legal 500. He is also the Member of the Committee on Software Patenting at FICPI and the Treasurer of the FICPI Indian Group.

He has personally drafted over 500 patents and prosecuted thousands. He regularly conducts training programs for companies and has formulated IP policies and strategies for numerous organizations.

On a personal note, when I look back and attempt to list what may qualify as “good” deeds in my life, convincing a very bright engineering student in a Pune bar [“elbow room’] to become a patent attorney would rate very highly on that list. That bright engineer was Essenese. He’s come very far since then and would easily rank today as one of India’s top patent attorney in the under 35 category.

Readers tracking software patents on this blog will appreciate that my take on section 3(k), the Indian provision governing software patents is quite different from the manner in which Essenese proposes to construe this. Though both of us agree that the term “technical” ought not to be the determinative filter that separates the non patentable software inventions from patentable ones.

With this guest post, I hope we can generate more debate on this theme.

PATENTING OF SOFTWARE INVENTIONS IN INDIA
By Essenese Obhan, Obhan and Associates

Although Indian patent jurisprudence has significantly evolved over the last few years in most areas of technology, the patenting of software inventions unfortunately remains a segment that has not witnessed any significant developments, either by way of judicial precedent or practice at the Indian patent office. While ambiguity on this subject exists in most jurisdictions across the world, the patent office in India is yet to define clear guidelines on the patentability of software inventions. In the absence of an official position set forth either by the Indian patent office or Indian courts, what emerges is the fundamental question: Are software inventions patentable in India?

The answer to this question may be found by analyzing the history surrounding the section of the Indian Patent Act that addresses software inventions – Section 3(k), which was first introduced in Indian patent law by the Patent (Amendment) Act, 2002. Section 3(k) prohibits the grant of patents for: “a mathematical or business method or a computer programe per se or algorithms”. Debates on the subject of patentability of software inventions often revolve around the phrase “per se” that is used in conjunction with software inventions in the Indian Patent Act .

The Patent (Amendment) Act, 2002 was first introduced as the Patents (Second Amendment) Bill, 1999, in Parliament (‘bill’). The bill was subsequently referred to a Joint Committee by both houses of the parliament for their comments and suggestions. Section 3(k) as present in the bill did not include the phrase “per se” for computer programes and prohibited the grant of patents for: “a mathematical or business method or a computer programe or algorithms”. This phrase “per se” was introduced in the bill on the recommendations that were received from the Joint Committee to whom the bill was referred.

The Joint Committee in its report stated that their deliberations were motivated by an abiding concern to balance and calibrate intellectual property protection with national and public interest. The Joint Committee, prior to recommending any changes to the bill invited views and consulted individuals, organizations and institutions interested in the subject matter of the bill in its attempt to offer a considered view on the subject matter of the bill.

With respect to the patenting of software inventions, the Joint Committee recommended the insertion of the phrase “per se” in Section 3(k) of the bill and clarified that the phrase was being inserted to address the patentability of inventions relating to computer programes that may include certain other things ‘ancillary thereto’ or ‘developed thereon’. The Joint Committee further clarified that the intention of the bill was not to reject such inventions from grant of patents but only distinguish such inventions from the underlying computer programes as such.

It is, therefore, clear that the legislature never intended to prohibit software inventions but only the underlying computer programes or algorithms. The computer programe as such has always been the subject matter of copyright protection and it appears that it was this distinction that was sought to be clarified by the Joint Committee whilst recommending the insertion of the phrase “per se” in Section 3(k). However, using the computer programe as a building tool for developing software products (‘developed thereon’), or identifying a better method or process (‘ancillary thereto’) for doing a task on a computer that is expressed by way of a computer programe, are clearly patentable subject matter as long as they satisfy the other requirements of an invention.

The phrase “per se” is, unfortunately, often interpreted in a manner which is in clear contradiction to the legislative intent. While some believe Section 3(k) to imply that generally all software inventions are not patentable, others believe the section to imply that mere computer programes are not patentable but that as long as the computer programe includes something more or something “technical” the computer programe may be patentable. A significant cause for the differing views on the subject is often on account of the different understanding of the terms that are used in discussions on software patenting. Some terms that need to be well defined and understood before any meaningful discussion can take place on the subject are software, computer programe, technical and algorithm.

Referring again to Section 3(k), what is prohibited from patent protection are “computer programes per se or algorithms”. While an algorithm may be said to be a series of steps or instructions for an electronic or computing device, the computer programe may be considered as an expression of the algorithm. However, the term algorithm is often misunderstood as a “method for a computer” resulting in method claims directed to computer related inventions being considered as excluded subject matter in India. Such interpretations of algorithm coupled with the inconsistent interpretations of the phrase “per se” have unfortunately mired the fate of software inventions in India.

It would seem illogical to have on the one hand the legislative intent of granting patents for software inventions, while on the other hand refusing method claims for software inventions. As a person in the software art would well recognize that at the heart of software inventions is a method and that a software invention may be expressed by multiple computer programes, each having an associated algorithm. The algorithms and its expression by way of the computer programe are effectively expressions of the software invention and ought to be considered as underlying layers on which software products are built and are not the invention themselves.

As an example, the invention in Symbian modifies the form and functioning of Digital Link Libraries (DLL) by suggesting that the DLL be formed of two parts; a fixed part and an extension part. The invention is said to avoid difficulties and unreliability associated with conventional DLL’s. Assuming, that this invention were sent to two different software development vendors for building a software product, both software vendors would likely implement the invention using a different algorithm which would be expressed by different computer programes. Both such computer programes and their associated algorithms are merely expressions of the same invention and are not the invention itself and accordingly, the Joint Committee rightly distinguished a software invention from the underlying computer programe or algorithm.

It may therefore be unnecessary to try and distinguish, as has been the practice, between a computer programe that is ‘technical’ or has a ‘technical effect’ from a computer programe that does not. A computer programe when implemented or worked on a computer is undoubtedly technical in nature and it would be difficult if not impossible to contend otherwise. As reported in SpicyIP, Mr. NN Prasad representing the Department of Industrial Policy and Promotion at a recent stakeholders meeting for discussions on the draft patent manual specifically instructed that the term ‘technical’ ought to be deleted from all manuals and guidelines, and that it might be in India’s best interest not to blindly follow the complicated and often inconsistent path that has been followed on the subject in foreign jurisdictions.

In fact, the UK Court of Appeal in the joint decision of Aerotel and Macrossan while confirming that the four stage approach for determining patentable subject matter ought to be applied in software inventions, also stated that the fourth stage would normally be unnecessary. The four stages referred to by the Court are:

1. Properly construe the claim;
2. Identify the actual contribution;
3. Ask whether it falls solely within the excluded subject matter;
4. Check whether the contribution is actually technical in nature.

A similar view was also expressed in Symbian where the Court held that the steps 3 and 4 may in fact be conflated and that the determination of excluded subject matter as required by step 3 inherently required the technical assessment of the contribution as required by step 4. It thus appears that both the UK and Europe may in fact eventually move away from a “technical” assessment of the software invention as an independent factor in determining patentability.

This may after all be the correct approach for India to adopt in connection with software inventions and a “technical” assessment of a software invention as an independent test for determining the patentability of a software invention should be avoided. So long as the invention itself, and not its expressions, is not a mathematical method or a business method that have been specifically excluded from patent protection in India; and so long as the invention itself satisfies the requirements of novelty and inventive step, such software inventions should constitute patentable subject matter.

It should therefore be immaterial whether the patent application for the software invention has method claims or system claims. The focus of patentability assessment ought to be on properly construing the claim and identifying the actual contribution, as set out in steps 1 and 2 above, and not on whether the general subject matter appears to be technical or recites a technical device as a limitation. An assessment of the invention or the actual contribution along these lines inherently includes an assessment of the technical effect or character of the software invention contribution. A software invention not including a technical contribution would undoubtedly fall within the ambit of the business method exclusion. A software invention may of course be partly of a technical nature and partly of a non technical nature and it is thus imperative that due care be exercised while drafting the specification to ensure that the claims bring out the technical contribution of the invention.

As the Indian Patent Act does not specifically exclude software inventions, and as the Joint Committee specifically acknowledges that inventions that are ancillary to or are developed using computer programes are patentable, software inventions are patentable subject matter in India. Accordingly, patentability assessments would be well served to focus more on identifying the actual invention or contribution of the software invention and then determining if the contribution falls within the exclusions set forth in the Indian Patent Act, rather than determining the technical effect or character of the software invention, which is undoubtedly inherently technical in nature.

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.

14 comments.

  1. AvatarSushant

    It is quite disheartening to see lawyers continue to play with wordings to slip in patents for software. I am not a lawyer and not very good with what “merely” or “intenetly” or “per se” or “technical applications” mean.

    From many posts in support of patents (including this one), I understand that the normal argument is to come up with one abstract way of defining what is patentable. Then accept all patents that logically follow from that abstract definition.

    If we can come up with one such definition of patentable matter that addresses all concern people have, I am fine with that. Unfortunately, there is no such definition. Patent on different subject matters have to be investigated by looking at its real world impact on promoting growth and tying down hands of people. “Logically” has really no place in it.

    I think we need to go case by case on what patents are required and for how long. For software, I give credit to Indian Government, CPI(M) and FSF for getting this right in India.

    The way software is distributed has huge protections built into it in the form of copyright and licensing of binary software rather than the actual source code. There is lot of things to be done with software by Indian people. We should not try to tie people’s hand by such play of words.

    Reply
  2. AvatarAnonymous Coward

    Patenting of Software Inventions in India

    I’m glad that Shamnad has gotten a viewpoint opposed to his on this blog, and allowed for a lively debate on this topic. Rather predictably, I couldn’t disagree more with Mr. Obhan. I will try to outline my main disagreements with him in the rest of this comment.

    1. Mr. Obhan believes the “fundamental question” is whether “software inventions” are patentable in India. I, however believe the fundamental question is: what are “software inventions”? That’s a category that he’s invented, hasn’t been defined, and he insists are something different from “computer programmes”. If by “software inventions” he means things that are “ancillary” to software (like hardware), or “developed thereon” (like a better design for an aircraft wing that is developed on a computer using simulation software), then I have no disagreement with him. However, that is not what he appears to mean.

    How “software products” are “ancillary” to “software” (a.k.a. “computer programmes”) is not something I understand readily. And “identifying a better method or process for doing a task on a computer that is expressed by way of a computer programme” is just a weasel phrase that is being used instead of the simpler “computer programme”. A computer programme is a conglomeration of sets of algorithms expressing a certain method or process for interacting with hardware. “Identifying a better method or process for doing a task on a computer” when expressed by way of a “computer programme” isn’t something that is “developed upon” a computer programme. It is simply a computer programme. It might be a better computer programme than existed earlier. But it is still only a computer programme.

    2. While it is very heartening that Mr. Obhan deals with the legislative history of the section 3(k), I believe he has not presented a complete picture.

    An Ordinance was introduced in December 2004, and was tabled in Parliament in 2005 to change section 3(k) to read:
    ” a computer programme per se other than its technical application to industry or a combination with hardware;”
    with a section 3(ka), which read:
    “a mathematical method or business method or algorithms;”
    This Ordinance was rejected by Parliament. Please note that not only does it mention “technical application” but also “a combination with hardware”. Both were rejected.

    3. Algorithms generally are prohibited from patentability, not just “series of steps or instructions for an electronic or computing device”. All algorithms, not just computing algorithms, are prohibited subject matter for patents. That is to say that only inventions are patentable, and that algorithms are not considered inventions. Also, it is a bit strange to read Mr. Obhan’s statement (in the context of software patents) in the fifteenth paragraph that an invention is patentable as long as it is not “a mathematical method or a business method”. What if it is a “computer programme”. Isn’t that after all what we’re discussing? It is also odd to have him add “and so long as the invention itself satisfies the requirements of novelty and inventive step, such software inventions should constitute patentable subject matter”. Subject matters like “business methods”, “algorithms”, and “computer programmes per se” are not patentable come what may. Novelty and inventive step cannot at all be considerations when it comes to excluded subject matter, since being novel and non-obvious will not make them patentable nor will being non-novel and obvious make them unpatentable. It is excluded subject matter.

    4. The focus of patentability assessment, according to Mr. Obhan, ought to be on steps 1 and 2. I believe it ought to be on step 3. Of course steps 1 and 2 are prerequisites to go to step 3, since not every invention that has a software component is automatically excluded subject matter. What has to be seen is if the software comes within the scope of the claims as a contribution to the art (steps 1 and 2). If it does, then that part of the claim ought to be excluded. It is my opinion that the rest of the claims should still be allowed to stand, though I know that there are many others that differ from this view, since that possibly brings about the danger of “software in combination with hardware” (while I think it doesn’t).

    5. First things fifth, DLL stands not for Digital Link Libraries, but for Dynamic Link Libraries. And what Mr. Obhan is suggesting in the tenth paragraph is rather dangerous. What he seems to say is: The idea of a particular form of DLLs ought to receive protection, but particular DLLs written in that form (using that idea) should not. But what he does not say is that all those particular DLLs would be violating patent rights if they are produced without the authorization of the “innovator”.

    All that seems to tell us is that while the MacPherson strut suspension system is patentable while a particular specimen of the MacPherson strut suspension system is not. But things aren’t that simple when it comes to software.

    The MacPherson strut suspension system has lasted for many decades now. And it competes with many other forms of suspension systems. A fourteen to twenty year period of protection, while excessive in this day and age of industrial production, could still be argued for when we are talking of a MacPherson strut suspension. But the half-life of software is very short, while the core concepts of software programming have not changed at all. (The art of computer programming is so well-developed that a bible exists, authored not by God but someone who comes close: Donald Knuth.) Thus, to argue for a similar period of protection for a field like software is, for the lack of a better word, insane.

    6. When Mr. Obhan says, “both inventors would likely implement the invention using a different algorithm” he has lost a whole lot of the technically-minded audience (of which I am one). Let us start from the beginning. An algorithm is a set of step-by-step instructions. A -> B -> if yes -> C, else -> D, etc. We have all seen algorithms being represented by flow charts. Human can read flow charts. Similarly computers read algorithms in the form of computer programmes. All Turing machines (and that includes all computers as we know them today) are run on the basis of such series of instructions (a.k.a. algorithms). That is a fact that cannot be run away from.

    “Then why,” the astute reader may ask, “are ‘computer programmes’ mentioned separately from algorithms? Gotcha!” Not quite. In the United States, there has been a line of cases which has sought to differentiate between algorithms and software. It is to clarify, and to err on the side of caution, that the legislature has included “computer programmes per se” as a separate entry.

    7. To say that a sentence like: “the computer programme may be considered as an expression of the algorithm” is unclear is to be generous to it. Perhaps he would like to elaborate on it.

    How he surmises a “legislative intent of granting patents for software inventions” from is unclear. As is the meaning of: “at the heart of software inventions is a method and that a software invention may be expressed by multiple computer programmes, each having an associated algorithm.” While I have a working knowledge of programming and of computers and technology (and despite having consulted some techie friends), that sentence evades understanding even by persons well-versed in “the software art”. Perhaps Mr. Obhan would oblige us with a more detailed explanation of what he means by all those terms (“software invention”, “computer programme”, and “algorithm”) in such a manner that it would pass muster in a “for dummies” book.


    And my, that photo has him looking dapper!

    Warm regards,
    A. Cow.

    Reply
  3. AvatarSasi

    As a citizen of India, my concern is not whether the law in India is supportive of software patents or not. Instead, it is whether software patents are desirable or not. The primacy is for citizens and not for laws, and we should change the law if it is not desirable. There is overwhelming evidence that software patents do more harm than good and there are serious doubts whether they do any good. It has been shown time and again that patents are not really an incentive for innovation. In certain cases, patents may help to bring inventions to the public domain with restrictions where they may have otherwise remained obscure and finally lost, and that is, perhaps, the only benefit to society from patents. As Prof. Eben Moglen neatly put it, the benefit of restricting knowledge has been mainly for distributors (and lawyers?) and opening up knowledge and software affects them most. That era is getting over. Free Software and Wikipedia are, perhaps, two of the best examples to demonstrate that people will create and distribute, if possible, without any monetary incentive. The days of the so-called “IPR” are over, but some people may still be unwilling to change with the times. We can only sympathise with them. The words of Kumaran Asan, “Change the rules, else they will change you”, have to be seen in a new light.

    Reply
  4. AvatarAnonymous

    It is encouraging to see that a plausible interpretation of ‘per se’ has been proposed, instead of blindly equating it with the ‘as such’ of the EPC.

    Reply
  5. AvatarR S PRAVEEN RAJ

    I should disagree with Mr. Sasi at least to the extent of his conviction of IPR as an obsolete tool. However I would agree totally to him, had he meant a big no to patents or any form of IPR in software “per se”. Indian Patent Act is very clear in this respect.

    I once asked a US Patent attorney as to the enforceability of software patents. He told that most of the software patents were employed by patentees as a licensing tool or negotiation tool and that is an accepted business practice. Because the companies are not interested to waste their time and money in litigation proceedings.

    But is too early for India to allow software patents, as we are yet to explore R & D opportunities in software arena. But there should not be any bar in granting patents to tangible devices incorporating embedded software if the device (to be vended in market) is claimed as a whole citing the specific application. That is why the word “per se” is used in our statute.

    R.S. Praveen Raj
    Former Patent Examiner, Indian Patent Office

    Reply
  6. AvatarSasi

    This is just in response to Sri Praveen Raj. I don’t like the term IPR because it clubs together things that are not similar, which leads to confusion especially among people who do not understand this. So I would rather not talk about Copyrights, Patents, Trademarks and such other things together. The properties of these ideas and how the law affects people are very different in each case. Thus, while copyright prevents the best utilisation of the power of ICT, trademarks hardly affect anyone. In the case of patents, we can see some benefits in some cases. But the point I was trying to make was this: Copyright and patent laws were implemented under the belief that they provide an incentive for innovation and creativity. But this has been more or less shown to be largely baseless, though society has not yet accepted this. Thus, while I could agree with Sri Praveen Raj that the so-called “IPR” is not yet obsolete, they are more or less moving in that direction. Knowledge is definitely on the way to becoming Free (as in Swatantra).

    Reply
  7. AvatarAnonymous

    I agree with Mr. Obhan to the extent that we need to clearly define the terms algorithms, computer programe, technical etc considering that these terms have been specifically used in Indian patent Law. I thank him for his research, as this the first time that the root of the phrase “per se” has been explored.

    Reply
  8. AvatarR S PRAVEEN RAJ

    I totally agree to Mr. Sasi that knowledge shall not be appropriated by any one (and should be rendered free for the use of all). On the other hand, IPRs are essential for promoting healthy competition, as they are granted to outputs of creativity leading to possible industrial use. Pl. see the link below for the concept of “invent around”

    http://www.thehindubusinessline.com/2007/03/06/stories/2007030600492100.htm

    IPRs precipitate issues only because of unethical practices by business outfits trying to seize the existing knowledge as their property (mostly by unfair means). Unfortunately there were many such instances and incidences. The concept IPR cannot held responsible for its misuse in wrong hands.

    Reply
  9. AvatarYogi

    Dear Shamnad,
    Something really interesting struck my eye on the EPO website. The EPO has called for third party submissions on the issue of patentability of computer programs. Hope our courts will take a clue from this and will do the needful. We can only hope 🙂
    I have reproduced the EPO notification below: The link is available at: http://www.epo.org/topics/news/2009/20090219.html

    Your say on the patentability of computer programs

    The Enlarged Board of Appeal has said that third parties wishing to file written statements concerning pending referral G 3/08 can do so until the end of April. The case, which seeks to clarify questions on the patentability of computer programs, was referred to the Enlarged Board of Appeal by EPO President Alison Brimelow last year.

    “It is expected that third parties will wish to use the opportunity to file written statements” the announcement in the January edition of the Official Journal reads.

    “To ensure that any such statements can be given due consideration they should be filed together with any new cited documents by the end of April.” More details on how to file a statement are available in the Official Journal linked at the bottom of this page.

    The referral does not call into question EPC Article 52(2) and (3), which states that programs for computers as such are not to be regarded as inventions and are therefore excluded from patentability. Instead, it seeks guidance on how the details of this exclusion are to be applied.

    Reply
  10. AvatarAnonymous

    Mr Obhan’s business forces him to adopt the flawed view of patentability of software as larger the number of areas which can issue patents-the better his bread is buttered. Contentious it might be but at least he gets to make money while arguing one side of the same even if it is the wrong side in this adversarial system.

    We are supposed to be debating an issue at a macro level and not get bogged down by this so called “pith and substance” kind of a reading by Mr Obhan who would kindly illustrate to us the ways to assess the differences between
    A software invention not including a technical contribution and A software invention partly of a technical nature and partly of a non technical nature and the dichotomy of technical effect and technical.

    Reply
  11. AvatarNick Robinson

    Hi,

    I found your blog post very interesting & also you ve written about peace to your profile, those are very nice words.
    i am Nick Robinson,a community member at Patents dot Com(a comprehensive free patent search engine).
    Will like to talk(through email) to you,is this the right time to talk about or should we talk during weekends ?

    Regards,
    Nick Robinson

    [email protected]

    Reply

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