| An Overview Of Software Patenting | | | | least 20 years for a product patent and 15 years |
| The concept of “intellectual property” in | | | | in the case of a process patent. For Copyright, |
| India over the last few years has taken on some | | | | the agreement prescribes a minimum period of |
| epic proportions for a number of reasons. One of | | | | the lifetime of the author plus seventy years. |
| the primary reasons, attributable to the growing | | | | Jurisdictions Of Software Patenting |
| awareness among the urban Indian population, is | | | | Substantive law regarding the patentability of |
| of the significance and, more importantly, the | | | | software and computer-implemented inventions, |
| commercial benefits in protecting its intellectual | | | | and case law interpreting the legal provisions, are |
| property rights both within and outside India. And | | | | different under different jurisdictions. |
| under traditional principles of intellectual property | | | | Software patents under multilateral treaties: |
| protection, patent law is to encourage scientific | | | | • Software patents under TRIPs Agreement |
| research, new technology and industrial progress. | | | | • Software patents under the European Patent |
| The fundamental principle of patent law is that the | | | | Convention |
| patent is granted only for an invention i.e. new and | | | | • Computer programs and the Patent |
| useful the said invention must have novelty and | | | | Cooperation Treaty |
| utility. The grant of patent thus becomes of | | | | Software patenting under TRIPs Agreement |
| industrial property and also called an intellectual | | | | The WTO's Agreement on Trade-Related |
| property. And the computer software is a | | | | Aspects of Intellectual Property Rights (TRIPs), |
| relatively new recipient of patent protection. | | | | particularly Article 27, are subject to debate on |
| The term “Patent’’ has its origin from | | | | the international legal framework for the |
| the term “Letter Patent’’. This | | | | patentability of software, and on whether |
| expression ‘Letter Patent’ meant open | | | | software and computer-implemented inventions |
| letter and were instruments under the Great Seal | | | | should be considered as a field of technology. |
| of King of England addressed by the Crown to all | | | | According to Art. 27 of TRIPS Agreement, |
| the subjects at large in which the Crown | | | | patents shall be available for any inventions, |
| conferred certain rights and privileges on one or | | | | whether products or processes, in all fields of |
| more individuals in the kingdom. It was in the later | | | | technology, provided that they are new, involve |
| part of the 19th century new inventions in the | | | | an inventive step and are capable of industrial |
| field of art, process, method or manner of | | | | application. (...) patents shall be available and patent |
| manufacture, machinery and other substances | | | | rights enjoyable without discrimination as to the |
| produced by manufacturers were on increased | | | | place of invention, the field of technology and |
| and the inventors became very much interested | | | | whether products are imported or locally |
| that the inventions done by them should not be | | | | produced." |
| infringed by any one else by copying them or by | | | | However, there have been no dispute settlement |
| adopting the methods used by them. To save the | | | | procedures regarding software patents. Its |
| interests of inventors, the then British rulers | | | | relevance for patentability in the |
| enacted the Indian Patents and Design Act, 1911. | | | | computer-implemented business methods, and |
| With respect to patentability of software -related | | | | software information technology remains |
| inventions, it is currently one of the most heated | | | | uncertain, since the TRIPs agreement is subject |
| areas of debate. Software has become | | | | to interpretation. |
| patentable in recent years in most jurisdictions | | | | Software patents under the European Patent |
| (although with restrictions in certain countries, | | | | Convention |
| notably those signatories of the European Patent | | | | Within European Union member states, the EPO |
| Convention or EPC) and the number of software | | | | and other national patent offices have issued |
| patents has risen rapidly. | | | | many patents for inventions involving software |
| Meaning Of Software Patenting | | | | since the European Patent Convention (EPC) came |
| The term “software” does not have a | | | | into force in the late 1970s. Article 52 EPC |
| precise definition and even the software industries | | | | excludes "programs for computers" from |
| fails to give an specific definition. But it is basically | | | | patentability (Art. 52(2)) to the extent that a |
| used to describe all of the different types of | | | | patent application relates to a computer program |
| computer programs. Computer programs are | | | | "as such" (Art. 52(3)). This has been interpreted to |
| basically divided into “application programs” | | | | mean that any invention which makes a |
| and “operating system programs”. | | | | non-obvious "technical contribution" or solves a |
| Application programs are designed to do specific | | | | "technical problem" in a non-obvious way is |
| tasks to be executed through the computer and | | | | patentable even if a computer program is used in |
| the operating system programs are used to | | | | the invention. Computer-implemented inventions |
| manage the internal functions of the computer to | | | | which only solve a business problem using a |
| facilitate use of application program. | | | | computer, rather than a technical problem, are |
| Though the term ‘Software patent’ does | | | | considered unpatentable as lacking an inventive |
| not have a universally accepted definition. One | | | | step. Nevertheless, the fact that an invention is |
| definition suggested by the Foundation for a Free | | | | useful in business does not mean it is not |
| Information Infrastructure is that a software | | | | patentable if it also solves a technical problem. |
| patent is a "patent on any performance of a | | | | Computer programs and the Patent Cooperation |
| computer realized by means of a computer | | | | Treaty |
| program". | | | | The Patent Cooperation Treaty (PCT) is an |
| According to Richard Stallman, the co-developer | | | | international patent law treaty, which provides a |
| of the GNU-Linux operating system and | | | | unified procedure for filing patent applications to |
| proponent of Free Software says, “Software | | | | protect inventions. A patent application filed under |
| patents are patents which cover software ideas, | | | | the PCT is called an international application or PCT |
| ideas which you would use in developing software. | | | | application. Under the PCT, the international search |
| That is Software patents refer to patents that | | | | and the preliminary examination are conducted by |
| could be granted on products or processes | | | | International Searching Authorities (ISA) and |
| (including methods) which include or may include | | | | International Preliminary Examining Authority |
| software as a significant or at least necessary | | | | (IPEA). |
| part of their implementation, i.e. the form in which | | | | Current Trend |
| they are put in practice (or used) to produce the | | | | However, before we start hailing the advent of a |
| effect they intend to provide. | | | | new era and equating the patenting of software |
| Early example of a software patent | | | | in India it would be well worth our while to take a |
| On 21st Sep 1962, a British patent application | | | | pause and examine the realities of software |
| entitled "A Computer Arranged for the Automatic | | | | patenting. We could do this by looking at |
| Solution of Linear Programming Problems" was | | | | examples of countries in which software patenting |
| filed. The invention was concerned with efficient | | | | has already become the order of the day, such |
| memory management for the simplex algorithm, | | | | as in the US and Japan |
| and may be implemented by purely software | | | | United States |
| means. The patent was granted on August 17, | | | | The United States Patent and Trademark Office |
| 1966 and seems to be one of the first software | | | | (USPTO) has traditionally not considered software |
| patents. | | | | to be patentable because by statute patents can |
| Conceptual Difference Between Copyright And | | | | only be granted to "processes, machines, articles |
| Patent | | | | of manufacture, and compositions of matter". i.e. |
| Software has traditionally been protected under | | | | In particular, patents cannot be granted to |
| copyright law since code fits quite easily into the | | | | "scientific truths" or "mathematical expressions" of |
| description of a literary work. Thus, Software is | | | | them. The USPTO maintained the position that |
| protected as works of literature under the Berne | | | | software was in effect a mathematical algorithm, |
| Convention, and any software written is | | | | and therefore not patentable, into the 1980s. This |
| automatically covered by copyright. This allows | | | | position of the USPTO was challenged with a |
| the creator to prevent another entity from | | | | landmark 1981 Supreme Court case, Diamond v. |
| copying the program and there is generally no | | | | Diehr. The case involved a device that used |
| need to register code in order for it to be | | | | computer software to ensure the correct timing |
| copyrighted. While Software Patenting has | | | | when heating, or curing, rubber. Although the |
| recently emerged (if only in the US, Japan and | | | | software was the integral part of the device, it |
| Europe) where, Patents give their owners the | | | | also had other functions that related to real world |
| right to prevent others from using a claimed | | | | manipulation. The court then ruled that as a device |
| invention, even if it was independently developed | | | | to mold rubber, it was a patentable object. The |
| and there was no copying involved. | | | | court essentially ruled that while algorithms |
| Further, it should be noted that patents cover the | | | | themselves could not be patented, devices that |
| underlying methodologies embodied in a given | | | | utilized them could. |
| piece of software. On the other copyright | | | | But in 1982 the U.S. Congress created a new |
| prevents the direct copying of software, but do | | | | court i.e the Federal Circuit to hear patent cases. |
| not prevent other authors from writing their own | | | | This court allowed patentability of software, to be |
| embodiments of the underlying methodologies. | | | | treated uniformly throughout the US. Due to a |
| The issues involved in conferring patent rights to | | | | few landmark cases in this court, by the early |
| software are, however, a lot more complex than | | | | 1990s the patentability of software was well |
| taking out copyrights on them. Specifically, there | | | | established. Moreover, Several successful litigations |
| are two challenges that one encounters when | | | | show that software patents are now enforceable |
| dealing with software patents. The first is about | | | | in the US. That is the reason, Patenting software |
| the instrument of patent itself and whether the | | | | has become widespread in the US. As of 2004, |
| manner of protection it confers is suited to the | | | | approximately 145,000 patents had issued in the |
| software industry. The second is the nature of | | | | 22 classes of patents covering computer |
| software, and whether it should be subject to | | | | implemented inventions. |
| patenting. | | | | Japan |
| However, issues involved in conferring patent | | | | Software is directly patentable in Japan. In various |
| rights to software are a lot more complex than | | | | litigations in Japan, software patents have been |
| taking out copyrights on them. Specifically, there | | | | successfully enforced. In 2005, for example, |
| are two challenges that one encounters when | | | | Matsushita won a court order barring Justsystem |
| dealing with software patents. The first is about | | | | from infringing Matsuhita's Japanese patent |
| the instrument of patent itself and whether the | | | | 2,803,236 covering word processing software. |
| manner of protection it confers is suited to the | | | | Indian Position |
| software industry. The second is the nature of | | | | With respect to computer software, in Patents |
| software and whether it should be subject to | | | | (Amendment) Act, 2002, the scope of |
| patenting.a) Different Subject Matters | | | | non-patentable subject matter in the Act was |
| Copyright protection extends to all original literary | | | | amended to include the following: "a mathematical |
| works (among them, computer programs), | | | | method or a business method or a computer |
| dramatic, musical and artistic works, including films. | | | | programme per se or algorithms". |
| Under copyright, protection is given only to the | | | | However, the recent amendment changes |
| particular expression of an idea that was adopted | | | | (Ordinance, 2004), which amends the Patents Act, |
| and not the idea itself. (For instance, a program to | | | | 1970, has been promulgated after receiving |
| add numbers written in two different computer | | | | assent from the President of India and has came |
| languages would count as two different | | | | into effect from 1st Jan., 2005. Apart from |
| expressions of one idea) Effectively, independent | | | | change in pharmaceuticals and agro chemicals, one |
| rendering of a copyrighted work by a third party | | | | of the seminal amendments this Ordinance seeks |
| would not infringe the copyright. | | | | to bring is to permit the patenting of embedded |
| Generally patents are conferred on any 'new' and | | | | software. |
| 'useful' art, process, method or manner of | | | | Hence, the amendment means that while a |
| manufacture, machines, appliances or other | | | | mathematical or a business method or an |
| articles or substances produced by manufacture. | | | | algorithm cannot be patented, a computer |
| Worldwide, the attitude towards patentability of | | | | programme which has a technical application in any |
| software has been skepticalb) Who may claim the | | | | industry or which can be incorporated in hardware |
| right to a patent /copyright? | | | | can be patented. Since any commercial software |
| Generally, the author of a literary, artistic, musical | | | | has some industry application and all applications |
| or dramatic work automatically becomes the | | | | can be construed as technical applications, |
| owner of its copyright. The patent, on the other | | | | obviously it opens all software patenting. |
| hand is granted to the first to apply for it, | | | | In any case, any company seeking to file a patent |
| regardless of who the first to invent it was. | | | | application for software under the Ordinance |
| Patents cost a lot of money. They cost even | | | | should ensure that its invention firstly, follows the |
| more paying the lawyers to write the application | | | | three basic tests: |
| than they cost to actually apply. It takes typically | | | | • Inventive Steps |
| some years for the application to get considered, | | | | • Novelty |
| even though patent offices do an extremely | | | | • Usefulness |
| sloppy job of considering.c) Rights conferred | | | | Therefore, it is important that the software |
| Copyright law gives the owner the exclusive right | | | | sought to be protected is not merely a new |
| to reproduce the material, issue copies, perform, | | | | version or an improvement over an existing code. |
| adapt and translate the work. However, these | | | | Further, in accordance with the specific |
| rights are tempered by the rights of fair use | | | | requirements of the Ordinance with regard to |
| which are available to the public. Under "fair use", | | | | patentability of software, the software should |
| certain uses of copyright material would not be | | | | necessarily have a technical application to the |
| infringing, such as use for academic purposes, | | | | industry or be intrinsic to or “embedded” |
| news reporting etc. Further, independent | | | | in hardware. This is to prevent against any future |
| recreation of a copyrighted work would not | | | | litigation or claims of infringements being raised, |
| constitute infringement. Thus if the same piece of | | | | which is a distinct probability even after a patent |
| code were independently developed by two | | | | has been granted. |
| different companies, neither would have a claim | | | | Conclusion |
| against the other. | | | | India for its part seems to have adopted the |
| A patent confers on the owner an absolute | | | | more conservative approach of the European |
| monopoly which is the right to prevent others | | | | patenting norms for software. But the Ordinance |
| from making, using, offering for sale without his | | | | definitely has its use and relevance in today’s |
| her consent. In general, patent protection is a far | | | | India, particularly for our growing domestic semi- |
| stronger method of protection than copyright | | | | conductor industry. This, along with judicial |
| because the protection extends to the level of | | | | tempering might definitely ensure a judicious use |
| the idea embodied by a software and injuncts | | | | of patent protection while allowing the industry to |
| ancillary uses of an invention as well. It would | | | | grow through innovations and inventions, thereby, |
| weaken copyright in software that is the base of | | | | mitigating the risks of trivial patents chocking the |
| all European software development, because | | | | life out of real innovations and inventions. This is |
| independent creations protected by copyright | | | | the reason a patent should always be treated as |
| would be attackable by patents. Many patent | | | | a “double edged sword”, to be wielded |
| applications cover very small and specific | | | | with caution and sensitivity. Now whether, in |
| algorithms or techniques that are used in a wide | | | | reality this will be implemented on a rigid basis or |
| variety of programs. Frequently the "inventions" | | | | will become broad in scope through application (as |
| mentioned in a patent application have been | | | | in the U.S.), and, more importantly, whether the |
| independently formulated and are already in use | | | | Ordinance would, in fact, result in increased |
| by other programmers when the application is | | | | innovation and inventions in the software industry, |
| filed.d) Duration of protection | | | | remains to be seen. |
| The TRIPS agreement mandates a period of at | | | | |