Tag Archives: Software patents in India

Workshop on patenting computer related inventions in India

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InvnTree and Computer Society of India (Bangalore Chapter) have come together to conduct a workshop that addresses various nuances involved in patenting computer related inventions in India.  The details corresponding to the same are provided below.

Introduction

The number of software companies in India has been consistently increasing over the years. In the past, most of these companies provided software services. However, India has steadily moved up the value chain, resulting in a plethora of software product companies. Consequently, companies have been concentrating on innovation gain competitive edge over products of local and global competitors.

Competitive advantage based on innovation largely depends on how well the innovation can be protected, and there lies opportunities and challenges. Patent protection is one of the most preferred options, and in many cases the only practical option to protect innovation in the computer and software domains.

Patent protection of innovations in the computer and software domains has its peculiar challenges. These peculiar challenges have given rise to misconceptions, largely in the tech community, that inventions in the software domain cannot be patented. Adding to the challenges, different jurisdictions including India, US and Europe have developed varying frameworks for determining subject matter eligibility of software inventions.

In view of the foregoing, the workshop aims at providing an in-depth knowledge about eligibility criteria for patenting software inventions. Further, the workshop will provide a comparison between India, US and Europe in the context of software patenting. 

Workshop overview

The workshop will cover the following topics:

  • Overview of patents and its advantages
  • Overview of patent system and processes
  • Discussion on criteria to obtain a patent
  • Detailed discussion on software patentability in India
  • Detailed comparison between India, US and Europe in connection with software patentability
  • Role of copyright in software protection
  • Role of trade secret in software protection

Key take away

  • Good understanding of the patent system and its implication on business
  • Strategies for obtaining patent protection in different countries
  • Preliminary capability for scrutinizing innovations for the purposes of patenting
  • Understanding of the challenges, opportunities and framework for software patenting in India, US and Europe  
  • Understanding of supplemental means for protecting IP in software

Key speaker

Kartik Puttaiah | Founder | Patent and Trademark Agent | InvnTree IP Services Pvt. Ltd.

Kartik is the co-founder of InvnTree. He has over eleven years of experience in patent consulting and is proficient at providing patent services in technologies related to manufacturing, automation engineering, medical devices, software engineering, and telecommunication engineering.

His decade-long patent practice has made him an expert in securing patents, advising on patent portfolio development and mitigating IPR related risks. His counsel is especially sought after in hearings before the Indian Patent Office due to his impressive track record of successes there.

Kartik is a popular speaker at IP conferences and often delivers instructive talks on topics ranging from IP policies to the practical aspects of patent practice in India. Apart from delivering talks at conferences and seminars in India, he has enjoyed delivering speeches at conferences in the USA, Japan and South Korea.

Date and venue

  • November 18, 2017 (Saturday)
  • CSI Bangalore Chapter, Unit No.201, 2nd Floor, MB Center, 134, Infantry Road, Bengaluru – 560 001.

Registration Contact

  • Telephone: 080 22860461 / 40906171 / 09448905268 (mobile)
  • Email: bangalore.csi@gmail.com | mailto:manager@csibc.org
  • Website: www.csibc.org

Registration fee and account details

  • CSI-Member Industry: INR 3,000/- | Non Member-Industry: INR 4,000/-
  • CSI-Member Academic: INR 2,500/- | Non Member-Academic: INR 3,000/-
  • CSI-Student Member: INR 1,500/- | Other Student: INR 2,000/-
  • CSI Bangalore Chapter
  • A/c No. 33762189110,
  • Payable at State Bank of India, B1, Cross Road, MIDC, Andheri(E) Mumbai – 400 093.
  • IFSC Code / NEFT / RTGS Code: SBIN0007074,
  • MICR : 400002057, IFSC :SBIN0003298,
  • SWIFT Code :SBININBB363

Guidelines of 2017 for Examining Computer Related Inventions in India

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Patentability of software inventions, which are generally referred to as Computer Related Inventions (CRI), is a topic of constant debate, not just in India, but around the world. India has been trying to introduce objectivity to this topic, which is subjective by nature, by way of amendment to the Act, and by introducing guidelines for examining CRI over the years. The latest among these efforts, is the introduction of guidelines by the office of the Controller General of Patents, Designs and Trade marks, India (generally referred to as Intellectual Property Office – IPO). The guidelines came into effect from June 30, 2017, and replaces previous guidelines for examining CRI. The guidelines can be downloaded here. 

The merits of such guidelines being binding on the patent applicants are questionable, since they neither supersede the Act nor caselaw. However, one can argue that these guidelines may be binding on the patent examiners (acting on behalf of the Controller). Nevertheless, these guidelines will have significant practical implications. The examiners are expected to follow these guidelines while examining CRI. Therefore, their rational while issuing examination reports, granting or rejecting patents to CRI will likely be in line with these guidelines. Further, these guidelines, if nothing, are at least an indirect reflection of the governments stand on patentability of CRI. Hence, there are several compelling reasons for discussing these guidelines in greater detail.

At the outset, it is worthwhile to point out that the guidelines (“new guidelines”) are favourable towards grant of patents for CRI, as compared to the outgoing guidelines (“earlier guidelines”). The notable difference between the two guidelines is the ouster of a “three stage” test, reproduced below, prescribed in the earlier guidelines to determine patentability of CRI.

(1) Properly construe the claim and identify the actual contribution;

(2) If the contribution lies only in mathematical method, business method or algorithm, deny the claim;

(3) If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability. (emphasis added)  

As per the test, a novel hardware had to be present, irrespective of how inventive the software is, for a patent to be granted. In other words, if the inventiveness lies only in software, then the same is not patentable. Such a stance goes against the legislative intent, which in fact clarified its position by introducing an amendment in 2002. The amendment excluded “computer programme per se”, instead of just “computer programme”, from being considered as patent eligible subject matter. The legislative intent to attach suffix per se to computer programme is evident in the view, presented below, expressed by the Joint Parliamentary Committee (JPC) while introducing the amendment.

In the new proposed clause (k) the words ''per se" have been inserted. This change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon. The intention here is not to reject them for grant of patent if they are inventions. However, the computer programmes as such are not intended to be granted patent. This amendment has been proposed to clarify the purpose   

The JPC states “the computer programme may include certain other things, which may qualify them as inventions, and hence be awarded patents. Computer program cannot certainly “include” hardware. Therefore, the three stage test prescribed previously went against the legislative intent while dealing with CRI.

On the other hand, the debate is, what can a computer program “include” that is “ancillary thereto or developed thereon”, which make it an invention. In our view, computer program can include “technical manoeuvres”, again expressed as computer program, which nudge CRI from being categorized as “computer programme per se”.

The new guidelines do not deal with what “other things” the computer program can include that is “ancillary thereto or developed thereon”, which makes it an invention. Hence, the clarity one may desire in the guidelines while examining CRI is still largely absent. However, on a positive note, the guidelines offer stuffiest scope to the examiners to exercise discretion while examining CRI, and to the applicants to argue their case based on the Act, legislative intent and caselaw, without knocking the doors of the Intellectual Property Appellate Board (IPAB).

In conclusion, we welcome the new guidelines to the extent that the three stage test has been ousted, and offers scope for software inventions to be critically examined, without depriving them of patents for want of novel hardware.

We hope this article was a useful read. 

Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

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

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!

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