Guest Post: A look at Software Patents – II

Punam Kadam continues her two part blog post here. You can view the first part of her post here. [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 – II

Continuing from my previous post that looked at the patentability of software in various jurisdictions in the light of the distressing reactions from Software industry associations, this post seeks to anatomize the inadequacies apropos the Indian context.

Demystifying the “no- new-hardware, no-patent” approach by IPO:

Section 3(k) of Indian Patent’s Act, 1970 addresses absolute exceptions to the patentability relating to “mathematical methods, business methods, computer programme per se or algorithm” which are not considered patentable. Software, as a literary work, is nothing but a text comprising of the source code of a program, thus resulting in the combination of ‘original’ elementary ideas. This means that software has automatic legal protection under copyright, without the need for patenting. But this protection isn’t enough as patents protect functionality whereas copyright only protects an expression of the idea and not the inventive ideas embodied within the software.

It is important to note that the term “per se” is only applicable to computer programs and hence, a number of patents relating to software inventions are granted in India every year by intelligently attaching a hardware component, to circumvent the statutory roadblock of “per se”

In a laudable attempt, the IPO came up with draft guidelines in June 2013 to foster uniformity and consistency in examination of CRIs and also offered an opportunity to practitioners to comment on the same.

Sections 3.15 and 5.4.6 of the draft conflict and have been the most contentious sections. Section 3.15 defines “technical effect” as “solution to a technical problem, which the invention taken as a whole, tends to overcome. Examples of the technical effect are listed in the guidelines which include- higher speed , reduced hard-disk access time , more economical use of memory , more efficient data base search strategy, more effective data compression techniques, improved user interface, better control of robotic arm, improved reception/transmission of a radio signal.

 A careful analysis of these two sections clearly indicates that the IPO has erred in its interpretation of “technical effect” as “hardware component”. Section 5.4.6 says “A computer programme which may work on any general purpose known computer does not meet the requirements of the law. For considering the patentability of computer programme in combination with hardware features, the hardware portion has to be something more than general-purpose machine

Thus for determination of excluded subject matter relating to CRIs, a computer programme loaded on a general purpose known computer or related devices cannot be held patentable. This “novel software on a novel hardware” mandate of the IPO is inconsistent with major patenting jurisdictions and is a major cause of concern. FICCI in their representation to the IPO correctly stress on this inconsistency. They say “there would be an extra burden on the software companies to now also put their resources to now carry out innovations in hardware as well, which is not their mandate at all, should they want their novel software to be patented”

Anand and Anand, one of leading law firms in the country, in their feedback say “by this understanding only completely changed new machines and only a new revolution of computers, mobile phones etc will be considered allowable and no inventions in path breaking fields such as mobile communication or faster and more efficient technologies in operating systems will be allowed. That is to say India’s largest industry – computer software (not hardware) – cannot secure any patents in India”.

A larger picture:

While the debate on the software patenting has intensified, there have been concerns apropos FOSS movement. For the innovation models employed by FOSS, the source code of the software, protected by copyright and monetized via licensing, needs to be disclosed. In contrast, software protected via patenting does not mandate revelation of the source code and hence is considered a bane by FOSS. There have been enough studies to prove how patents as well as other intellectual property rights (copyrights, trademarks and trade secrets) might better accommodate the concerns of the FOSS communities. In the light of FOSS movement, it will be important to clarify the IP laws that make software patenting less uncertain.

In conclusion:

Admittedly, the software fits somewhere between artistic works and tangible inventions, hence difficult to conceptualize in terms of age-old “legal” protection viz; Patents. There has been brouhaha to go beyond copyright and patents lately to keep the legal uncertainties concerning both at the bay. Although IPO’s attempt of coming up with the draft guidelines merits high praise, it isn’t enough.

Clearly, the concerns expressed by the industry associations are valid and India needs to evolve as a developed body of jurisprudence that serves the software patenting well. It has been clarified in the guidelines that they are in their draft stage; serve just as a reference and are not a part of the law. In the case of any conflict of the guidelines with the Patents Act, the Patents Act, 1970 will prevail. It will be interesting to see what stand IPO takes in the view of the feedbacks they have received from various stakeholders.

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

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