murky waters: software innovations and ......wipr marapr 2013.pdf author leonie created date...
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44 www.worldipreview.com
MURKY WATERS: SOFTWARE INNOVATIONS AND
BUSINESS METHODS IN INDIA
Patent protection in India is governed by
the Indian Patents Act 1970. Indian so�ware
companies such as Infosys, TCS, Wipro and many
multinational companies have been proactive in
#ling patent applications for their innovations
in India. �is is evident from the annual report
of 2010–2011 published by the Indian Patent
O%ce, which indicates that in the year 2010–
2011, around 219 applications were #led in the
#eld of bioinformatics and 9,594 applications in
the #eld of computer science/electronics, which
SOFTWARE PATENTS
44 World Intellectual Property Review March/April 2013
�e so�ware industry has been one of the most
promising sectors of the global economy. Many
so�ware companies come up with creative
business models in their endeavour to grow. In
recent years, it has been observed that so�ware
companies ardently seek intellectual property
protection as part of their business strategies to
build on their assets.
In India, so�ware and computer programs are
protected under the Indian Copyright Act 1957.
is an increase of 12.6 percent over the previous
year. In the same year, 892 patents were granted
in the #eld of computer science/electronics.
�e grant of so�ware patents is a debatable subject
matter under the Indian patent regime. �e Indian
Patent Act, 1970 under Section 3(k) provides that
“a mathematical or business method or a computer
program per se or algorithm” is non-patentable,
which raises the questions of what is actually
patentable under the act.
45World Intellectual Property Review March/April 2013www.worldipreview.com
SOFTWARE PATENTS
As per the guidelines of the dra� manual, the
method claim should clearly de#ne the steps
involved in carrying out the invention. It should
have a technical character—in other words, it
should solve a technical problem. �e claim
orienting towards a ‘process/method’ should
contain a hardware or machine limitation. In
view of these guidelines it would be safe to
interpret that so�ware in conjunction with a
speci#c hardware or a device or apparatus, which
results in a substantial technical e9ect, may be
patentable.
�e recent prosecution trend based on the
Controller’s decisions throws light on a few
interesting facts. In some of these decisions, a
number of patent applications that were initially
objected to under Section 3(k) for innovations
involving so�ware or algorithms, eventually
obtained a grant. In a case decided in May 2012,
the Controller had objected that the claims of
the invention fell within the scope of Section
3(k), because it relates to a computer program.
�erefore, the invention claimed in these claims
was not patentable.
The argument presented in the case was that
the invention claims a method for a process
containing various steps being performed by
the structural components for fetching an
instruction from the memory for execution
in a processor. It was argued that the method
claims do not claim the software to perform
said steps and hence the subject matter of the
method claims cannot be said to be a computer
program per se. The case was granted in
acceptance of this argument. In view of such
decisions, it would be safe to say that the
presence of substantial technical effect and
hardware limitations in the claims may help
overcome such objections.
Business methods
Section 3(k) also provides that business
methods are non-patentable. Business method
patents are scrutinised more than so�ware
innovations. �is is re:ected in the notable
pre-grant opposition involving Yahoo Inc and
Redi9.com. In this case, the IP Appellate Board
(IPAB) held that business method patents are
not an appropriate subject matter in India. �e
case involved a patent application, dated May
14, 2004, #led by Overture Services Inc of the
US for a business method.
Yahoo acquired Overture in 2003. �e
application was examined and claims were
objected to under Section 3(k), but the applicant
successfully overcame the objections in the
examination proceedings. �e applicant was
It has been observed that Section 3(m), which
provides that “a mere scheme or rule or method
of performing a mental act” is non-patentable, is
also cited for so�ware innovations that do not
involve hardware limitations.
It is interesting to explore the possibility or
probability of obtaining patent protection for
software innovations in India. The manual
of patent office practice, published in 2011,
specifies that the claims directed at computer
program products are computer programs
per se stored in a computer readable medium
and as such, are not allowable. From the
draft manual published by the Indian Patent
Office in 2008, it is a common understanding
that methods implemented by software that
lack technical character and methods with
a technical character but lacking hardware
limitations in the specification are not
patentable.
Software companies have long struggled
with how best to protect their IP in India,
as Shivendra Singh explains.
46 www.worldipreview.comWorld Intellectual Property Review March/April 2013
IP protection and proactively protecting one’s
IP continue to be necessary factors to derive
economic value from so�ware innovations.
Shivendra Singh is a patent agent and associate
with Krishna and Saurastri Associates. He can be
contacted at: [email protected]
SOFTWARE PATENTS
informed on June 9, 2006 that the application
was found to be in order for grant, but only
a�er disposal of any pre-grant opposition. On
April 20, 2007 the application was published.
Redi9 #led a pre-grant opposition on October
27, 2007.
Meanwhile, Yahoo Inc informed the patent o%ce
that it had taken over the original applicant.
Yahoo Inc was informed that the application did
not pass the patentability test and was therefore
rejected.
Shivendra Singh holds a Bachelor’s
degree in electronic engineering and
is currently pursuing an LLB from the
Government Law College in Mumbai.
Singh has extensive experience in providing
freedom to operate opinions, due diligence,
patent dra�ing and prosecuting patent
applications at the Indian Patent O%ce.
Yahoo Inc #led an appeal with the IPAB against
the Controller’s decision, arguing, among other
things, that many such patents had been granted
to Google.
The IPAB in its decision dated December
8, 2011 dismissed the appeal, stating that
“There are huge innovations in the computers
themselves, but the invention claimed is not
for the machine but for the method. From
whichever point of time we look at it, it still
looks to be a business method.”
As we look ahead to the future of so�ware in India,
it is evident that with the growing competition in
the Indian market an apposite IP protection for
the so�ware technologies is a must.
Patents involving so�ware innovations are
di%cult to interpret on most occasions, but in the
present scenario when companies #nd di9erent
ways to obtain protection for their so�ware, an
indolent approach by others may prove to be
adverse for their growth.
�e progress for protecting IP in so�ware
in India has been slow. Nevertheless, careful
strategy, adequate understanding of appropriate