November 30, 2021

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How to create patent strategies for patenting software coding

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This article is written by Ankur Saxena, pursuing a Certificate Course in Intellectual Property Law and Prosecution from LawSikho.

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In the present computer era, it is nearly impossible to think about any technology which is directly or indirectly related to computer or computer-related development. Everything around us is related, in one way or another, to the use of computing resources and it is no wonder that the patentability of inventions based on computer technology is gaining significant attention in India. Therefore, as a practitioner, you are often asked “Are computer-implemented inventions in India patentable?” or in other words “How to create Patent strategies for Patenting software coding?” A typical response can be – it depends on whether the invention is excluded by a computer program from Section 3(k) of the Indian Patent Law. Therefore, it is important to understand what section 3(k) of the Indian Patent Act means. The present article analyses the current situation of the software patents in India with the help of data of filed and granted patents. The article will also review the progression of the Indian Patent Act by discussing various judgments and Indian case laws.

Section 3(k) of the Indian Patent Act states that “business method or computer program per se” are not inventions. The Guidelines on Computer Related Inventions (CRI) published in June 2017 by the Office of the Controller General of Patents, Designs and Trademarks, clearly state that a computer program cannot be a patent in itself. The term computer program has been defined in the Copyright Act 1957 under Section 2(ffc) as “computer program” means “a set of instructions expressed in words, codes, schemes or in any other form, including a machine-readable medium, capable of causing a computer to perform a particular task or achieve a particular result”. The deciding factor in section 3(k) is “computer program per se”. The term “per se” is not defined in Indian statutes including the Patents Act, 1970 and hence, for interpretation of this term, the general dictionary meaning is being used. The general dictionary meaning of “per se” is “by itself” or “in itself” or “as such” or “intrinsically” – to show that you are referring to something on its own, rather than in connection with other things.

If the application is only based on a mathematical method, a business method, or an algorithm, the guideline recommends rejecting the application. The main expressions in the section are “technical applications for the industry” and “hardware combination”. According to the section, if an invention is computer software that has a technical application for industry or is coupled to hardware, it complies with patentability. The section placed a blanket ban on the ability to patent standalone computer software. If the invention as a whole involves more than a computer program, it will be eligible for patent protection.

The Indian Patent Office defines software inventions in the category of Computer Related Inventions, one or more of which are incorporated in whole or in part by means of one or more computer programs. These inventions are described in the guidelines issued by the Patent Office for the examination of computer-related inventions. Generally, patent applications covering topics related to software inventions are divided into different categories by the Patent Office, which includes: (i) method/process, (ii) apparatus/device/system, (iii) computer-readable medium, and (iv) Computer program product. In the invention which claims computer-readable media or computer program products, the Indian Patent Office classifies these patent claims according to computer programs and usually, these claims are not patented in accordance with Indian patent laws. Therefore, some points need to be remembered while claiming computer-related inventions: 

  • The specifications of all inventions related to the software implementation must be written to describe all capable hardware functions with suitable illustration drawings. 
  • Drawings can also be provided which clearly reflect the hardware features of the invention.
  • The working relationship of different components together with connectivity shall be described.
  • It is observed that in the inventions where the novelty and inventive step is found by way of hardware combined with software applications, it is advisable to clearly define the combination of hardware with software and how the software can enhance the efficiency of the hardware.
  • The drafted claims must also enable the use of hardware features with the software using reference numerals for enhancing the intelligibility of the claims.
  • If method/process claims related to computer-related inventions having novel and inventive aspects, the hardware features can also be enabled in the method claims such that it can be claimed that the invention is not a mere software claim but a combination of the software and hardware. These method claims are patentable in accordance with Indian patent laws.
  • The claims concerning CRIs are often phrased in means for performing some function such as means for converting digital to analog signal etc. These types of claims are termed as means + function format. The “means” mentioned in the claims shall clearly be defined with the help of physical constructional features and their reference numerals to enhance the intelligibility of the claims. The Controllers usually don’t allow the claims if the structural features of those means are not disclosed in the specification.

Therefore, subject to Indian patent laws and guidelines issued by the Indian Patent Office for computer-related inventions/software patents, software patents can be applied in India by combining hardware and software features that are novel, inventive, and have industrial applications. In particular, software patent applications filed in India thus require innovative methods, including all phases of software application, flowcharts, as well as new hardware claims (system/system claims), including system architecture elements including related methods/procedures.

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Indian Patent Office has granted software patents in which section 3(k) objection was raised during the issuance of the examination report. Some of these are discussed below:

  • Google LLC has filed a patent application 3023/KOLNP/2014 titled “Location History Filtering”. This invention relates to filtering location information from various computing devices. During the patent prosecution, the Controller objected under section 3(k) of the Indian Patent Act, in which the Controller stated that claims 1 to 14 defines computer instructions in memory and is executed by the processor, so these claims fall under the purview of section 3(k) of the Indian Patents Act.

In response to this objection, the Applicant responded by proving that the claims are not for computer programs, but for a computing device, which has increased its technical effect due to its constructional features such as processor, memory, network interface, user interface, server, location device, etc.

  • ORACLE International Corporation filed patent application 231/KOLNP/2010 that is titled System and Method for Compending Blogs. During patent prosecution, the Controller raised objections under Section 3(k) of the Indian Patents Act, wherein the Controller stated that the subject matter of claims 1-10 related to system and method for compending blogs is a computer program per se and thus non-patentable.

In response to this objection, the Applicant responded claims 1-10 recite one or more hardware components such as a system having a processor and a memory, a database, a server (54), etc. Figure 4B, and lines 21-35 of page 33 and lines 1-20 of page 34 of the original complete specification describe the hardware components which implement presented claims 1-10.

  • Further, in the recent Delhi High Court judgment in Ferid Allani vs. Union of India & Ors on 12 December 2019, the High Court observed that: 

“Section 3(k) has a long legislative history and various court rulings have also interpreted this provision. The patent prohibition refers to “computer programs per se …” and all inventions based on computer programs. In today’s digital world, when most inventions are software-based, it would be backward to argue that not all of these inventions can be patented. Innovations in the field of artificial intelligence, blockchain technology and other digital products will be based on computer software, although they will not become inventions that cannot be patented, just for that reason. It is rare to see a product that is not based on a computer program. Whether it is cars and other vehicles, microwave ovens, washing machines, refrigerators, they all have some kind of built-in computer software. Therefore, the impact of such programs, which include digital and electronic products, is important in determining the proof of patenting.

Patent applications in these areas should be investigated to see if their result is a “technical contribution”, it added.

In addition, it is noted that the words per se were incorporated in Section 3(k):

“… to ensure that genuine inventions developed on the basis of computer programs are not refused patents.”

The decision came in relation to patent application No. IN/PCT/2002/00705/DEL filed by Ferid Allani on July 17, 2002, directed to a method for accessing information sources and services on the web and a device thereof.

Finally, it can be concluded that even after the publication of a series of guidelines, Controllers continue to reject software-based inventions on a similar basis, disregarding these established guidelines. The Applicants are expected to set another precedent for the court to support their arguments in favour of the authorization of computer inventions. Therefore, we can expect the above decision to show positive changes with regard to the examination of CRI applications. However, we have to wait and observe for a while to see how the Examiners and Controllers react and open up, referring to the previous decision cited by the applicants at the hearing.

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