Immigration Lawyers

PATENT PROTECTION FOR SOFTWARE IN INDIA

INTRODUCTION

Patentability of the software- related inventions are very controversial in these days. In early 1960s and 1970s uniform response was that software was not patentable subject matter. But in subsequent years United States and Japan expanded the scope of patent protection. But several countries including Europe and India are reluctant to grant patents for computer program for the fear that technological progress in this volatile industry will be impeded. Proponents for the software patenting argue that patent protection will encourage, and would have encouraged, more innovation in the software industry. Opponents maintain that software patenting will stifle innovation, because the characteristics of software are basically different from those of the innovations of old Industrial, e.g. mechanical and civil engineering.

PROTECTION FOR SOFTWARE –RELATED INNOVATIONS

WIPO defined the term computer program as: "A set of instructions capable, when incorporated in a machine readable medium, of causing a machine having information processing capabilities to indicate, perform or achieve a particular function, task or result". Software can be protected either by copyright or patent or both. Patent protection for software has advantages and disadvantages in comparison with copyright protection. There have been many debates concerning patent protection for software as information technology has developed and more software has been developed. This caused mainly due to the characteristics of software, which is intangible and also has a great value. It needs huge amount of resources to develop new and useful programs, but they are easily copied and easily transmitted through the internet all over the world. Also due to the development of e-commerce, there is urge for patenting of business methods.

Computer programs remain intangible even after they have actually come into use. This intangibility causes difficulties in understanding how a computer program can be a patentable subject-matter. The questions of whether and what extent computer programs are patentable remain unresolved.

More than half of the 176 countries in the world that grant patents permit the patenting of software-related inventions, at least to some degree. There is a worldwide trend in favor of adopting patent protection for software-related inventions. This trend accelerated following the adoption in 1994 of the TRIPS Agreement, which mandates member countries to provide patent protection for inventions in all fields of technology, but which stops short of mandatory patent protection for software per se. Developing countries that did not provide such protection when the TRIPS agreement came into force (January 1, 1995) have until January 1, 2005, to amend their laws, if necessary, to meet this requirement.

EUROPEAN PATENT CONVENTION

The European Patent Convention is the treaty that established the European Patent Organization (EPO). The EPO grants patents that are valid in those member countries designated in the EPO application and subsequently perfected in those countries. Enforcement of the EPO patent is obtained through the national courts of the various countries.

The software has been protected by copyright and excluded from patent protection in Europe. According to Article 52(1) of the European Patent Convention (EPC), European Patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step. Article 52(2) excludes schemes, rules and methods for performing mental acts, playing games or doing business, and programming computers from patentability. Article 52(3) says that prohibition relates only to software 'as such'.

For Some years following implementation of the EPC, software in isolation was not patentable. To be patentable the invention in such a combination had to lie in the hardware. Then came a test case, EPO T26/86, a question of patentability of a hardware-software combination where hardware itself was not novel. It concerned patent for a computer control X-ray machine programmed to optimize the machine's operating characteristics for X-ray procedures of different types. The patent office refused to patent the invention. Technical Board of Appeal (TBoA) disagreed and upheld the patent, saying that a patent invention could consist of technical and non-technical features ( i.e. hardware and software). It was not necessary to apply relative weights to these different types of feature.

RECENT CASES

1.VICOM CASE

The VICOM case has authority on what does mean "computer Program as such" and what constitutes a "mathematical method". The patent application related to a method and apparatus for digital image processing which involved a mathematical calculation on numbers representing points of an image. Algorithms were used for smoothing or sharpening the contrast between neighboring data elements in the array. The Board of Appeal held that a computer utilizing a program to carry out a technical process is not claim to a computer program as such.

2. IBM cases

Subsequent major development occurred in 1999, when cases T935/97 and T1173/97 were decided on appeal to TBOA. In these cases the TBOA decided that software was not "software as such" if it had a technical effect, and that claims to software per se could be acceptable if these criterion was met. A technical effect can arise from an improvement in computer performance or properties or use of facilities such as a computer system with limited memories access stimulating better access by virtue of the computer programming. Decisions T935/97 and T1173/97 were followed elsewhere in Europe.

The European Technical Board of Appeals of the EPO rendered two important decisions on the patentability of Business Methods Inventions (BMIs). Business Methods Inventions can be defined as inventions which are concerned with methods or system of doing business which are using computers or internets.

3. The Queuing System/Petterson case

In this case a system for determining the queue sequence for serving customers at plural service points was held to be patentable. The Technical Board held that the problem to be solved was the means of interaction of the components of the system, and that this was a technical problem, its solution was patentable.

SOHEI CASE

The Sohei case opened a way for a business method to be patentable. The patent was a computer system for plural types of independent management including financial and inventory management, and a method for operating the said system. The court said it was patentable because "technical considerations were applied" and "technical problems were solved". Thus, the Technical Board considered the invention to be patentable; it was dealing with a method of doing business.

The most widely followed doctrine governing the scope of patent protection for software-related inventions is the "technical effects" doctrine that was first promulgated by the European Patent Office (EPO). This doctrine generally holds that software is patentable if the application of the software has a "technical effect". The EPO law regarding patentability of software tends to be somewhat more liberal than the individual laws of some of the EPO member countries. Thus, one desiring to patent a software-related invention in Europe should generally file an EPO application.

INDIAN PATENT ACT

Like in Europe, in India also the doctrine of "technical effects" governs the scope of patent protection for software-related inventions. The patent Act of 1970, as amended by the Act of 38 of 2002, excludes patentability of software per se. Section 3(k) of the Patent Act states "a mathematical or business method or a computer program per se or algorithm" is not patentable invention. The computer program products claimed as "A computer program product in computer readable medium", "A computer-readable storage medium having a program recorded thereon", etc are not held patentable for the claims are treated as relating to software per se, irrespective of the medium of its storage .On the other hand "a contents display method for displaying contents on a screen", "a method for controlling an information processing apparatus, for communicating via the Internet with an external apparatus", "a method for transmitting data across an open communication channel on a wireless device that selectively opens and closes a communication channel to a wireless network, and each wireless device including a computer platform and including a plurality of device resources that selectively utilizes a communication channel to communicate with other devices across the network" are held patentable though all above methods utilize computer programs for its operation. But computer program solely intellectual in context are not patentable.

CONCLUSION

In India software per se is not patentable. The inventions relating to the application of the computer program or software is held patentable under the Indian Patent Act, 1970 when claimed in combination of hardware and software components of a computer which provides a "technical advancement" over the prior art. It is necessary for the applicant to describe the "technical contribution" to the prior art when the invention involves software. The technical problem, which needs to be solved by the invention, should be sufficiently described as to how the hardware is controlled by the software to overcome the previously described problem. The "technical character" of the invention should be brought out clearly in the claims.