Guest Post: A look at Software Patents – I

In this 2 part guest post, Punam Kadam takes a look at software patents by first examining basic principles and international treatment of software patents, and then goes on in her second post to suggest that the IPO has erroneously used some key terms in their draft guidelines. Punam Kadam is a research professional who has worked in Pharma and Agrochemicals Industry and currently working as a Patent Associate at Inttl Advocare. The views expressed are her personal views and not that of her employers. [You can also view our previous related posts here (Shamnad’s comments on the guidelines) and here (Aparajita’s post highlighting the feedback received on the draft IPO Guidelines)]

A look at Software Patents – I

The concerns expressed by the software industry associates are valid and India needs to evolve as a developed body of jurisprudence that serves software patenting well.

17^th June 1965. Computerworld, the newsweekly for the computer community carried one of the most sensational headlines in the history of the computer press. “First Patent Is Issued for Software, Full Implications Are Not Yet Known”. Martin Goetz, programmer at Applied Digital Research (ADR) was awarded the first software patent. 48 years on, since the epochal event of 1965, software patenting is still fraught with uncertainties.

Software and Computer Related Inventions ­­­- The difference

“Software” refers to the intangible components of computer in the form of computer programs, whereas “hardware” refers to the tangible components. Computer hardware and software work in tandem. The Foundation for a Free Information Infrastructure (FFII) has defined the term “software patent” as being a “patent on any performance of a computer realised by means of a computer program”.

The term Computer Related Invention (CRI) has not been defined in any of the Indian, US and European statutes. According to the draft Guidelines for Examination of Computer Related Inventions (CRIs), Indian Patent Office (IPO), 28 June 2013 it is construed to mean –

“any invention which involves the use of computers, computer networks or other programmable apparatus and includes such inventions, one or more features of which are realized wholly or partially by means of a computer programme/programmes”

Inventions as computer implemented processes are patent protected typically, but ultimately the software is being protected. Software per se is not patentable unless it satisfies the patentability criteria and is tied to the hardware demonstrating the technical effect.

The legal context in various jurisdictions:

The legal framework for the patentability of software has been debated for some time. A recent publication in Business Standard highlights the reactions by the industry associations like BSA, Nasscom and TCS concerning the plight of software industry with respect to software patenting in India.

So in the light of these reactions it is important to analyze the legal framework for software patenting in various jurisdictions with respect to the provisions spelt out in TRIPS.

TRIPS Patentable Subject matter- Article 27:

The legal framework for the patentability of software has been debated for some time and Article 27 (1) of TRIPS is frequently referred to while debating whether software and computer-implemented inventions should be considered a “field of technology”. Article 27 (1) provides:

“Patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application”

This provision has often been construed to imply that TRIPS enables the patentability of software and the signatory countries of TRIPS can’t discriminate against technologies. So the patent claims must be extended to computer programs by default.

However, TRIPS is subject to interpretation and the major jurisdictions have provided their own exceptions to the patentability of software. Moreover, a detailed 2010 study by WIPO lists 64 countries that exclude software from patentable subject matter.

Paul Hartnack, Comptroller General of the British Patent Office, in his London hearing in 1997 famously commented on the requirement of TRIPS in respect of software patenting.

                         “Some have argued that the TRIPS agreement requires us to grant patents for software because it says patents shall be available for any inventions in all fields of technology, provided they are capable of industrial application”. However, it depends on how you interpret these words. Is a piece of pure software an invention? European law says it isn’t. Is pure software technology? Many would say no. Is it capable of industrial application? Again, for much software many would say no. TRIPS is an argument for wider protection for software. But the decision to do so should be based on sound economic reasons. Would it be in the interests of European industry, and European consumers, to take this step?”

In Europe, a computer program claimed “as such” is not a patentable invention. For a computer-implemented invention, a patent is granted only if a technical problem has been solved in a novel and non-obvious manner. Thus any new invention, which solves a “technical problem” or makes a non-obvious “technical contribution” is patentable even if that technical problem is solved by running a computer program. (Article 52(2) (c) and (3), EPC)

Under 35 USC 101, software is patentable in the United States provided that it is unique, is tied to a machine (hardware) and facilitates a set of functionalities. According to the US patent office’s Manual of Patent Examining Procedure (MPEP), claims directed towards abstract ideas (such as mathematical algorithms), natural phenomena, and laws of nature are not patentable.

Having dealt with the legality in the major jurisdictions, in my next post I will examine the issue in the Indian context.

(Part one of a two part blog series on the Software Patenting in India)