Boost in software patent protection in India

Computer programs per se, algorithms and software are not patentable in India. However, Indian courts have analysed the need for change to how software patents are examined in India, leading to clarity on the patentability of those inventions. There have been numerous instances in which patent applications have been initially refused owing to non-patentability and, after appeal, they were remanded back, and the IPO granted the patent after being satisfied that the invention had a technical effect or contribution and was not merely an algorithm. In most cases, when the applicants emphasise how the invention provides a technical solution to a technical problem and has a technical advancement over the prior art or if the software invention is tied to some hardware, the IPO has granted the invention.
In Ferid Allani vs Union of India and Ors, the Delhi High Court observed that most modern technologies, such as automobiles, washing machines and refrigerators, depend on computer programs in some manner, and if a computer program is rejected only because section 3(k) prohibits patentability, current inventions will lose their protection. It observed that the patentability bar only applies to ‘computer programs per se’ and not all inventions based on computer programs. It further held that if computer programs are considered non-patentable, it would be a regressive perspective, and inventions based on AI, blockchain and other digital products would also not be patentable. The Court held that ‘an invention is patentable if it displays a technological effect or contribution, even if it is based on a computer programme’.

In Accenture vs Assistant Controller of Patents, the invention claimed was a data document design system and design tools that addressed technical challenges faced by database systems. It was initially objected to on the grounds that the technical effect of data mapping cannot be recognised as a novel feature of an invention comprising a program without any special hardware adoption or modification. When the applicant appealed to the IPAB, the matter was remanded for reconsideration. The IPO then granted the patent, considering it not to be a stand-alone computer program; therefore, it became a rule of law that software patents do not require a special adaptation of existing hardware or any modification of such hardware.

In Yahoo! vs Controller of Patents and Rediff.com,it was held that where technical advances are only a manifestation of a core business method, the advances will not lead to a patent being granted. Consequently, software tools that are purely business methods will not be granted patents.
Nevertheless, India has witnessed an increase in software patents in the past five to six years, with Google obtaining a patent for ‘phrase identification in an information retrieval system’ and Apple for a ‘method for browsing data items with respect to a display screen associated with a computing device and an electronic device’. The Delhi High Court in Telefonaktiebolaget LM Ericsson v Lava International, clarified that if a combination of hardware and software satisfies the patentability requirements and achieves a further technical effect while solving a technical problem, the invention is patentable. It held that section 3(k) of the Patent Act would be applicable when a patent application for an abstract formula, such as an algorithm that is theoretical, is made. Mere mention of an algorithm in a patent specification cannot be a ground to infer that the invention is only an algorithm.

In accordance with the 2017 CRI Guidelines, a patent application for software as a method must be judged on substance (ie, on the underlying substance of the invention, not the form in which it is claimed); therefore, greater importance must be placed on the novelty, industrial use and inventive step used in creating the software rather than on it being a computer program or algorithm. Similarly, in Telefonaktiebolaget LM Ericsson v Intex Technologies, it was held that an invention showcasing a technical effect or giving a technical contribution is not merely a computer program per se and, therefore, is patentable.
In Microsoft Technology Licensing v Assistant Controller of Patents and Designs, the Delhi High Court held that if a computer program was used in conjunction with hardware or resulted in a technical effect or solved a technical problem, it may be eligible for patent protection. It observed that the approach of the controller was misguided as the reason for refusal – that ‘claims were implemented on a computer and were computer-executable instructions/algorithms performed on a general-purpose computing device’ – was not correct.

Finally, in Open TV vs Controller of Patents and Designs and Anr, the Delhi High Court dismissed an appeal filed by a patent applicant whose application was rejected under section 3(k) of the Patent Act. It observed that the invention falls under the category of business method as it is purely a method of giving media as a gift, which is nothing but a method of selling media for gift purposes; however, the Court also noted that the Report 161 of the ‘Review of the Intellectual Property Rights Regime in India’ provides that the provisions of both the Copyright Act and the Patents Act need to be reviewed to protect AI-generated works and AI-related inventions. The Report further recommended that the IPO should adopt a similar approach as that in the United States and the European Union, where the mathematical methods or algorithms linked to a tangible technical device, or a practical application are held patentable. The Delhi High Court expressed its concerns that: a large number of inventions in emerging technologies including by SMEs, start-ups and educational institutions could be in the field of business methods or application of computing and digital technologies. There is a need to have a re-look at the exclusions in Section 3(k) of the Patents Act, 1970, in view of the growing innovations in this space. As the Parliamentary Committee Report . . . recommends, the need to consider the march of technology in the digital space, is an urgent one, so that patent law is not outpaced and patenting itself does not become irrelevant in the years to come.