Introduction
Patents are exclusive territorial monopoly rights granted to inventors, generally for tangible products or processes in all areas of technology that are new and useful with certain exceptions like, abstract ideas, mathematical algorithms and life forms for a limited period of time. Protection is not granted to computer related inventions but the rise of computer –related technology and the software industry has made it the need of the hour to provide a suitable intellectual property protection in this area. Software was considered as a “mathematical formulae”[1] but with time and by evolution of many cases computer related inventions are now under the subject matter of patentable inventions. In Europe the invention should make a “technical contribution” to the state of art or have a “technical effect”[2] and in the US it is enough if the invention produces a tangible result[3]. It is now generally accepted that pure ‘computer programs, whether in source or object code, shall be protected as literary works’[4]. Copyright protects only “literal expressions” and not the “ideas” behind the computer programmes[5].
United States of America
Title 35 U.S.C.101[6] states that whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any useful improvement thereof may obtain a patent[7]. The law does not expressly prohibit any field of technology from being patentable. The courts had excluded ‘laws of nature, scientific phenomena, and mathematical formulae’ from patentability[8].Till 1970’s software-related inventions were considered as non patentable subject matter as “software was essentially mathematical formulae”[9]. In Diamond v Diehr[10] the US Supreme Court decided that patent cannot be denied for an invention for the only reasons that ‘its claims contained mathematical formulae’[11]. But, it was the landmark decision of the Court of Appeals in the Federal Circuit (CAFC) in the State Street Bank & Trust[12] case, with regard to a US patent claiming a data processing system for implementing a particular investment structure that combines the advantages of economies of scale with the tax benefits of partnership, which held that any computer- related invention is a patentable under law if it produces a useful, concrete and tangible result[13] which enlarged the scope of patentable subject matter. Then, further in re Alappat[14] the court indicated that even where mathematical concept is embodied in a specific machine to produce a useful, concrete and tangible result then the mathematical concept is a subject matter for patent[15].Post State Street Bank and re Alappat patents are issued in the US for computer-related inventions and Business methods whether the invention has a technical character or not provided the invention is novel and produces useful, concrete and tangible result and is within the ambit of statutory subject matter for a patent[16]. A computer programme that is executed in a computer or encoded on a readable medium is patentable in US.
Europe
Art 52(2) of the European Patent Convention (EPC)[17] expressly excludes ’computer related program per se’ and ‘methods of doing business per se’ from patentable subject matter, but, ‘only to the extent to which a European patent application or European patent relates to such subject matter or activities as such’[18].Till late 90’s the European patent office guidelines and the Board of Appeal took a similar and consistent view that, a computer programme claimed by itself or as a record on a carrier is non patentable irrespective of its content’[19]. In T833/91[20], the technical Board of Appeal broadened the scope of patentability, the technical contribution that allows a subject matter to be patentable might lie in:
· problem underlying the invention,
· the means constituting the solution, or
· the effects achieved by the solution of the underlying problem’[21].
Later in three cases, relating to inventions of IBM, the scope of patenting software related patents in Europe was considerably enlarged. All three relates to applications for patent by IBM which claimed for computer programme on a computer-readable medium. European patent Office rejected the applications stating that, since the medium and the program recorded thereon were not technically related the technical character of the computer program could not be derived from the physical character of the storage medium on which it was recorded[22]. The Board of Appeal in its conclusion reasoned that’ technical effect is achieved by the internal functioning of a computer itself under the influence of said programme[23], on the said condition all programmes must be considered as inventions[24], also a computer programme on a computer readable medium has the “potential to produce a technical effect” and hence not excluded from patentability. In another case, the Board of Appeal concluded that all programs when run in a computer are by definition technical[25]. These findings are totally divergent to the decision in SOHEI[26], which stated that normal interactions between a program and a computer could not amount to a technical contribution and it is necessary to show that a new machine was created. There are still divergent views on patentability of computer related inventions in Europe, some people want the computer programme to create a substantial technical contribution, others are interested in removing “computer programmes as such” from the excluded subject matter for a patent. European Parliament is still discussing a draft directive on patentability of computer related inventions. It has not been able to reach a consensus.
India
Patent system in India is governed by the Patents Act 1970[27] (hereinafter 1970 Act). Unlike in US and Europe it was not any existing case laws that brought computer-related inventions under patentable subject matter but rather, it was the Patent Act as amended in 2003 that made the new area of technology a patentable subject matter. The definition of the term ‘invention’[28] itself excluded patents for computer programmes. The 1970 Act was amended in 2002 to increase its compliance with the TRIPs agreement which India had signed in 1994.The amendment of the Act of 1970 changed the definition of ‘invention’[29] and also excluded ‘computer programme per se’ from patentability[30]. It was generally understood that a product embedded with a computer programme producing a ‘technical effect’ and having an inventive step is patentable. The latest amendment brought through an ordinance[31]to bring in major changes in the 1970 Act. Sec. 3 of the Patent Act lists non patentable subject matter and Sec.3 (k) excluded “a mathematical or business method or a computer programme per se or algorithms for being patentable”. Section 4.11 of the Draft Manual makes an attempt to inform the inventors and potential Patent applicants that while software per se is not patentable, software in combination with hardware can be patented[32].
The Patent Law of India at present does not provide protection to software as software is not a patentable subject-matter in terms of the patent law in India[33]. According to the Draft Patent Manual computer-implemented invention[34] means any invention the performance of which involves the use of computer, computer network or other programmable apparatus or an invention one or more features which are realised wholly or partially by means of a computer programmes. Further, Computer programs[35] are a set of instructions for controlling a sequence of operations of a data processing system. It closely resembles a mathematical method which may be expressed in various forms such as; series of verbal statements, a flowchart, an algorithm or other coded form and may be presented in a form suitable for direct entry into a particular computer, or may require transcription into a different format. Besides, the manual states that computer inventions include:
(1) Method/process
(2) Apparatus/System
(3) Computer program product[36]
If the software can function on hardware then it is patentable as per the Patents Manual. But then is there any software without any application or function? This yardstick of functionality is used with regard to all inventions as no invention can obtain patent until unless it has got some utility. So as per the patent law software per se not patentable but those having technical applicability might get a patent?
Software which is compatible with all forms of hardware would yield better results and software’s which can be used only with regards to certain specific hardware would be more limited in utility. It is unfair to grant patents to these specific customized software’s which give only limited results and not grant patents to software’s which have more general applicability and usage on all forms of hardware.
Conclusion
Only when the patent is granted will that act as an incentive to come out with more inventions, which will then be in public domain and common public can also use the invention. But the absence of such protection can have a severe impact on the innovations and on the whole aspect of growth and development in the IT sector. It is now time that the government takes note of the fact that the IT industry which has contributed significantly towards the growth of the economy is not well protected .An amendment of the Patent Act to the effect is necessary. Software and computer programs should be given the status of patentable subject-matter by amending Section 3(k) of the Act.
[1] Gottschalk v Benson, 409 US 63(1972)
[2] http://www.epo.org/patents/law/legal-texts/html/epc/1973/e/ma1.html
[3] http://www.law.cornell.edu/patent/patent.overview.html
[4] Art 10.1, TRIPS Agreement
[5] WIPO/IP/BIS/GE/03/07
[6] Supra note 4
[7] http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_101.htm
[8] Mackay Radio & Tel. Co v Radio Corp of Am., 306 US 86,94 (1939); Funk Bros. Seed Co. v Kalo Inoculant Co., 333 US 127,130 (1948)
[9] Gottschalk v Benson, 409 US 63(1972)
[10] 450 U.S. 175 (1981)
[11] Ibid
[12]149 F.3d 1368 (Fed. Cir. 1998)
[13] Supra note 12
[14] 33 F.3d 1526, 31 USPQ2d (BNA) 1545 (1994)
[15] Ibid
[16] Examination Guidelines for Computer-Related Inventions, USPTO
[17] http://www.epo.org/patents/law/legal-texts/html/epc/1973/e/ar52.html
[18] Art 52(3) EPC
[19] T204/93 OJ
[20] http://www.aplf.org/epo-update/
[21] T833/91 OJ
[22] T1173/97 OJ
[23] Supra note 19
[24] Supra note 19
[25] T0931/1995 OJ
[26] http://eupat.ffii.org/papri/epo-t920769/index.en.html
[27] http://www.indianlawcds.com/bareacts/patentsact70.htm
[28] http://www.indianlawcds.com/bareacts/patentsact70p1.htm, Sec 2(j) (j) "invention" means any new and useful-
(i) art, process, method or manner of manufacture;
(ii) machine, apparatus or other article;
(iii) substance produced by manufacture,and includes any new and useful improvement of any of them, and an alleged invention;
(i) art, process, method or manner of manufacture;
(ii) machine, apparatus or other article;
(iii) substance produced by manufacture,and includes any new and useful improvement of any of them, and an alleged invention;
[29] Ibid
[30] Sec 3(K) of the Patents Act 1970 as Amended by the Patents ( Amendment) Act, 2002
[31] The Patents Act 1970 as amended by the Patents (Amendment) Ordinance, 2004
[32] http://www.patentoffice.nic.in/ipr/patent/DraftPatent_Manual_2008.pdf
[33] http://ipindia.nic.in/ipr/patent/patact1970-3-99.html
[34] http://www.patentoffice.nic.in/ipr/patent/DraftPatent_Manual_2008.pdf
[35] Ibid
[36] Ibid
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