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