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Are software inventions patentable in India?



The India IT industry has witnessed tremendous growth is the past decade, resulting in large IT companies and inceptions of several promising start-ups. In the initial phases, the IT industry was largely focused on offering services. However, eventually, several companies started creating software products. Companies that create software products strive on innovation to create unique products to counter competition, hence, the desire to protect such innovation through patents and sustain competitive advantage.

Patent laws of several countries favour patent protection for software innovation. Such countries include USA, Australia and Singapore, to name a few. However, many other countries, which include India and European nations, have more stringent laws concerning patent protection to software innovation.

Indian Patent Act offers patent protection to product or process (if they satisfy various requirements of patentability) as long as they do not fall under non-patentable subject matter. Section 3 and 4 of the Indian Patent Act specify a list of subject matter that is not patentable. Section 3(k) of the Indian Patent Act, which is provided below, is of specific importance to software innovation.

“What are not invention – The following are not inventions within the meaning of this Act, – a mathematical or business method or a computer program per se or algorithms;”

Amateurs often refer to the above section and state that none of the software innovations are patentable in India. However, the reality is far from such perceptions.



To begin with, the patent office, in its “MANUAL OF PATENT OFFICE PRACTICE AND PROCEDURE” (MPPP) offers some clarity, if not to a great extent, on what kind of software innovations will be considered as “computer program per se” and held non patentable, and what kind of software innovations do not fall under section 3(k).

Before we move any further, one thing is certain from the inclusion of such explanation in the MPPP:

 
Not all software innovations fall under section 3(k). Hence, a wide range of software innovations are patentable even in India.

Having said that a wide range of software innovations are patentable in India, one has to be aware that, almost all patent applications for software innovations are initially objected by the patent office citing section 3(k).



However, if the application for a patent (patent specification) is crafted intelligently by understanding the Indian patent prosecution practice, one can successfully obtain protection for software innovation.

One of the keys for successfully having a patent granted for software innovation lies in the ability to present the innovation in such a way that the innovation, which we are aiming to protect, includes subject matter which is not a computer programme. Further, subject matter that is “not just a computer program” should be intelligently made an essential part of the invention, without compromising on the scope of protection.

The above opinion is reinstated by the fact that the Indian Patent Office has been granting patents to, what is normally perceived as “software innovations”. We have provided below, an exemplary list of patents granted by the Indian Patent Office to software innovations:
 

 

 

Company

 

 

 

Patent No.

 

 

 

Title of the patent

 

Google

252220

Generating user information for use in targeted advertising

Google

252156

Method and system for text segmentation

Google

246911

A method for automatically targeting web-based advertisements

Oracle

245515

Tracking space usage in a database

Oracle

252448

In-place evolution of xml schemas in databases

Ebay

242805

Facilitating micropayments between a plurality of parties

Ebay

239304

Method and system for scheduling transaction listings at a network-based transaction facility



 We hope this article helps innovators in the software industry to adequately protect their innovation. You may also be interested in reading our article relating to territorial Jurisdiction of Software Patents   


You can download a copy of this article here.


Feel free to write to us at contact@invntree.com with queries you may have, and we will be glad to help you!

I hope you found this article helpful. Please feel free check our patent services page to find out if we cater to your patent requirements.

Filing a national phase patent application in India after filing a PCT application

A PCT (Patent Cooperation Treaty) application, which is normally referred to as an “international application”, facilitates a patent applicant to file patent applications in the desired PCT member countries within 30 or 31 months from the priority date of the PCT application.
The patent applications that are filed in individual PCT member countries on the basis of the PCT application are generally referred to as “national phase applications”.
 
Timeline
In India, a national phase application can be filed within 31 months from the priority date of the PCT application. India does not provide time extension to file national phase applications.
 
Language requirement
The Indian national phase application can either be in English or Hindi (official language). While Hindi is an option, even Indian applicants choose to file patent applications in English. Hence, for all practical purposes, one shall consider filing the national phase application in English.
It shall be noted that, apart from filing the patent application in English, if a priority document of the PCT application is not in English, then an English translated priority document should be filed within 31 months from the priority date of the PCT application.
 
Examination
The Indian Patent Office (IPO) queues a national phase application for examination only after the applicant files an examination request. Hence, it is advisable to request for examination at the earliest.
An applicant has the option to file an examination request within 48 months from the priority date. Failing to request for examination within 48 months leads to abandoning of the patent application.
On the other hand, even if an applicant files a national phase application well before 31 months and also requests for examination, the IPO will queue the national phase application for examination only after 31 months. In case the Applicant wants the IPO to queue the national phase application for examination before 31 months, then an express request shall be made by paying appropriate fee (fee provided in the table below).
Once the application is queued for examination, the IPO is supposed to issue a First Examination Report (FER) within 6 months from the date on which the application was queued for examination. However, it normally takes substantially more time to receive the FER, owing to the workload at the IPO.
Once the FER is issued, the Applicant has 12 months to address the objections raised by the examiner and put the application in order for grant.
 

The statutory fee depends on who the applicant of the patent is. The Indian Patent Office (IPO) has categorized the applicants into 4 categories:

  1. Natural person
  2. Other than natural person – Startup
  3. Other than natural person – Small Entity
  4. Other than natural person – Others except small Entity

Any individual(s) applying for a patent is considered as a natural person. On the other hand, all other entities that do not fall under the first category, fall under the remaining categories of :

  1. Other than natural person – Startup
  2. Other than natural person – Small Entity
  3. Other than natural person – Others except small Entity
For example, legal entities, such as, companies would fall under these categories. It shall be noted that, a patent application can have more than one applicant, and even if one of the applicants do not fall under the first category, then the patent application is considered to be filed by applicants of the remaining two categories.
Applicants who are other than natural person are categorized into the below categories.
  1. Other than natural person – Startup
  2. Other than natural person – Small Entity
  3. Other than natural person – Others except small Entity
The patent office charges the least fee for applicants who are natural persons and Startups.The patent office charges other than natural person applicants who are a small entity, a fee, which is between a natural person/startup and others except small Entity.The patent office charges a maximum fee for other than natural person applicants who are Others except small Entity.The patent office collects 2 times the fee from the applicants who are "Other than natural person – Others except small Entity"  as compared to applicants who are "Other than natural person – Small Entity"Certain conditions have to be met by other than natural person applicants, who wish to claim "Small Entity" status. You can read more about this in our article.
 

The IPO fees for filing a national phase application are provided below:

 

Step No.

Step

Indian Patent Office Fee (E-filing)

Applicant – Individuals/Startups

Applicant – Non Individuals

Small Entity

 

Other than Small Entity

1

Filing a National Phase application in the IPO

USD 27

USD 68

USD 136

2

Fee for each sheet in excess of 30 sheets in a patent specification

USD 2.7/per sheet

USD 6.8/per sheet

USD 13.6/per sheet

3

Fee for each claims in excess of 10 claims.

USD 5.4/claim

USD 13.6/claim

USD 27.2/claim

4

Filing an Examination request in the IPO

USD 67

USD 168

USD 336

5

Filing statements and undertakings(Form 3) (Mandatory as per Indian Patent Act)

No fee

No fee

No fee

6

Fee for each priority document above 1 priority document

USD 27/priority document

USD 68/priority document

USD 136/priority document

Patent office fee may vary as per foreign exchange rates. 1 USD = ~ INR 60

 
You may also calculate the Indian Patent office fee using our calculator below. All fee in USD.
 

Indian Patent Filing Cost Calculator

 
Special Cases
 
Specification amendment

Kindly note that, the patent specification to be filed in the IPO has to be the same specification as filed in PCT stage in WIPO. Any article 19 and 34 amendments made during PCT stage, can be filed in IPO as well.

There can be a scenario wherein the Applicant wishes to file an amended specification (compared to the PCT specification) while filing the national phase application. In such scenarios, the specification present at the PCT stage shall be initially filed while filing the national phase application. Subsequently, the Applicant can file an amended specification along with an application to amend the patent specification  by paying the prescribed fee.
 
We hope this article helps you in understanding the nuances involved in filing an Indian national phase application. You may be also interested in reading our other articles:
At InvnTree, we have commendable expertise in filing national phase applications and prosecuting them. Feel free to write to us at contact@invntree.com for any assistance.
 
 
Best regards,
Team InvnTree 

Using Patents as a Marketing Tool – Good, Bad and the Ugly!

Marketing is one of the core functions in any business. This core function is carried out by working in conjunction with other functional units of companies. Working in conjunction with other functional units has known to help marketing teams in capitalizing on various aspects of the company to build brands and facilitate sales. 

One of the aspects that is being used increasingly over the past few years is patents. Using patents in marketing helps in sending across a wide range of messages. 

We recently conducted a survey to understand consumer perception when they recognize that a product is protected by a patent, be it through an advertisement or through information provided with the product itself. 

Largely, consumers seem to derive the below listed perceptions when they recognize that a product is protected by a patent:

  1. When a message about a product being protected by a patent is conveyed, the company as a whole is perceived to be innovative
  2. The patented product is perceived to be superior
  3. The patented product is perceived to be unique, as no one else can copy the patented product

I agree with the first perception to a large extent. The fact that a company has a patent granted, illustrates that the company has, at least to some extent, invested in innovation. Further, the company has long term (it generally take around 3.5 to 4 years to have a patent granted) vision in protecting their innovation. Hence, a perception that a company is innovative can be agreed upon. 

Further, as pointed out earlier, consumers perceive that a patented product is superior; this perception appears to be rather strong. However, while some patented products may be superior compared to other products in the market, it may not always be true. In over simplified terms, one can say that a patent was granted to a product or a process because the product has a feature or the process has a step that was not known to the public, prior to inventing the product or the process. However, it does not necessarily mean that the new feature or the process step is superior than the existing features or processes. Hence, a sweeping statement that a patented product is superior may not be accurate. 

While I have some objections with the second perception, I completely agree with the third perception. The patented product would be unique, at least to some extent, as compared to other products in the market. However, having an opinion that a patented product has some breakthrough innovation in it, may not be correct, considering that most innovations are incremental in nature and not breakthrough. The innovation in the product, be it incremental or breakthrough, the fact remains that the product is unique, as the product cannot be copied, since the product is protected by a patent. The common understanding among consumers that a patented product cannot be copied by other, and hence the product remains unique, appears to be greatly abused by marketers. 

Consumers to a large extent are not aware that patents are jurisdiction specific. In other words, a patent granted in US and not in India, cannot be enforced in India. Which means, if a patent for a product is not granted in India, and is granted only in the US, then anyone in India can copy the patented product without being liable for infringing on the rights of the US patent holder. 

I recently came across one such advertisement, which I think was trying to take advantage of incomplete understanding among the consumers about the patent system. The advertisement appeared in Times of India (TOI), Bangalore edition and was also found in TOI Mumbai edition. Image of the advertisement in the Mumbai edition is provided below. The advertisement is from a company called Advanced Hair Studio, and endorsed by Shane Warne!

InvnTree

Image source: Times of India

The advertisement stresses a lot on patents, with the word “patented” appearing 4 times in the advertisement, out of which, twice the company has used the word “patented”. Since, they have stressed substantially on patents, we wanted to find out the patent portfolio covering their technology. Surprisingly, while they have a few patents outside India, they don’t seem to have a single granted patent in India!

The advertisement gives an impression that their technology is protected by patents in India. However, considering that one of the most important aspects of patents, which is the jurisdiction in which it is granted, the advertisement should have mentioned that the technology is not protected by patents in India. 

Such usage of the word “patented”, commonly known as “false marking” may be interpreted as an effort to deceive the public. False marking is punishable in most countries, and in India (Indian Patent Act – Section 120), a fine extending up to INR 100000 (~$2200) may be imposed for such an offence. While, the extent of fine may not deter most companies from adopting false marking strategy for marketing, at least the knowledge that such practice is considered unethical, should stop them from adopting such strategies.

To sum it up, using patents as a marketing tool has a lot of positive effects on consumers. Hence, while marketers might use this strategy, ethical or not, to their advantage, consumers should absorb such messages with a pinch of salt. 

I hope this article helps in increasing knowledge about the patent system among consumers in general, and markets in specific.

Feel free to contact us (contact@invntree.com) or ask us a question and have it answered within 24 hours. Check our  patent services page to find out if we cater to your patent requirements. 

We specialize in offering patent support services to patent practitioners across the world.

Thanks,

Team InvnTree

This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License

What can be patented and what cannot be patented

Some time back I was asked by one of the readers of my article, if I can tell him what can be patented and what cannot be; hence this article.

This question appears to the one with a straightforward answer.  However, the answer to it is something that is highly debatable, and also varies depending on the country in which one wants to secure a patent.
 
A simple answer however is, anything that qualifies to be an invention can have a patent granted to it.
 
In the above answer, the word “invention” is the key word that requires definition.
 
In US, any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may have a patent granted to it, provided it satisfies all other requirements of patentability.
 
In India, an invention means a new product or a new process that involves technological advancement and/or has economic significance, which makes that new product or process non-obvious to a person who is skilled in the technology to which the product or process belongs. Additionally, the new product or process should be capable of being made or used in an industry for it to qualify as an invention.   
 
Most of the patent offices provide a simple definition of the word invention. However, they also provide a list of exclusions, which are not considered as inventions. This list is the one that often stirs up debates.
 
In India, section 3 provides a list of exclusion, and the list with examples is provided below:

1.      an invention which is frivolous or which claims anything obviously contrary to well – established natural laws: (Ex:

 
2.      an invention the primary or intended use or commercial exploitation of which would be contrary to law or morality or which causes serious prejudice to human, animal or plan life or health or to the environment; (Ex: A method of hacking into email accounts)
 
3.      the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature; (Ex: E = mc2)
 
4.      the mere discovery of any new form of a known substance which does not result in the enhancement of the known efficacy of that substance or mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such process results in a new product or employs at least one new reactant. (This exclusion has been at the forefront of most debates in the pharmaceutical sector)
 
5.      a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance. (Ex: Mixture of sugar and colorants in water, which only produces aggregation of properties and synergistic properties)  
 
6.      the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way; (Ex: A known type of torch connected to a know type of pen. Note, both the pen and torch work independently of each other)
 
7.      a method of agriculture or horticulture; (Ex: a method of growing plants)
 
8.      any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products; (Ex: process of carrying out a surgery. Note: processes in this case are not considered inventions. However, systems and apparatuses are still considered as patentable subject matter)
 
9.      plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals; (Ex: Cloning of animals)
 
10. a mathematical or business method or a computer program per se or algorithms; (this exclusion has been debated to great lengths. The debate is essentially because of the “computer program per se” exclusion. Note that, not all software related inventions are considered as “computer program per se”. Hence, the debate is relating to what should be considered as computer program per se, and what should not be)
 
11. a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions; (Ex: movies, poems etc.)
 
12. a mere scheme or rule or method of performing mental act or method of playing game; (Ex: Method of playing chess)
 
13. a presentation of information; (Ex: Presenting information in the form of a graph)
 
14. topography of integrated circuits; (Can seek protection under Semiconductor Integrated Circuit Lay-out Designs Act)
 
15. an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or componenets. (Usage of Nilgiri oil for reducing aches)
 
Some of the exclusions are straightforward; however, a few are debatable (section 3(d) and 3(k)).
 
Similar to India, most of the countries have provided with a list of exclusions. Some of the exclusions put forth by other countries may be similar to the ones provided above. It is important to be aware of the exclusion set forth by a country you are interested in before deciding on the patent specification drafting and filing strategy.
 
To know more about what can and cannot be patented in India, you may read our articles listed below:
 
I hope you found this article helpful. Please feel free check our patent services page to find out if we cater to your patent requirements.
 
You can download a copy of this article here
 
Best regards,
Team InvnTree