The issue of patentability of computer programmes has been fluxed with puzzlement since ages. Through this blog we will dig into the concept addressing the topic of patentability of computer programmes with technical effect and contribution and analyse the meaning behind the suffix 'per se' added to computer programmes in the patents act, 1970, in light of the recent judgment of Delhi High Court, in the case of FeridAllani v. UOI.
A computer programme is a set of instructions that enables the computer to function or perform a particular task. According to the Copyright Act, 1957, Computer Programme means a set of instructions exhibited through codes, words, schemes, etc., including a machine readable medium, which enables the computer to perform certain tasks or achieve particular result1. A Computer programme is categorized as a literary work, copyrightable under the Indian Copyrights act.2
Section 3 of the Patent act, 1970 enlists non-patentable inventions or things which are not considered to be inventions and hence not patentable under the Indian regime. Patentability of 'Computer programmes per se', has been restricted according to 'section 3(k)' of the Patent Act.
The issue of patenting the inventions related to computer programmes or computer related inventions have been clouded with puzzlement since decades. The legislature, since the proposal of patents( second amendment) bill 1999 and insertion of the term 'per se' after 'computer programmes' has tried to un-puzzle the whole scenario.
In the report of RajyaSabha on the Patents ( Second Amendment) Bill, 1999, it was clarified that the insertion of 'per se' post 'computer programmes' was done, so as to ensure that the computer related inventions are not rejected the grant of patent protection.
It was clearly stated that,
"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.3"
The term 'per se' is not defined specifically in the patents or copyrights act. However, 'per se' literally means, 'by itself', or 'in itself' or 'intrinsically'. The definition of 'per se' in relation to computer programmes, thus indicates that computer programmes in itself and by its own is not patentable and not in connection to other things thereof.4
The patents ( amendment ) Ordinance, 2004 brought upon a proposal to amend and add upon the phrase, 'a computer programme per se other than its technical application to industry or a combination with hardware' in section 3(k), which was rejected by the 2005 amendment act, on the ground that it would give rise to the monopoly of multinationals.5
Draft manual on patent practice and procedure, 2005, further brought upon a 14 page annexure containing the provisions relating to Computer Related Inventions (CRI's), followed by Draft manual 2008 and 2011.
Thereafter, in the year 2013, the first draft was prepared specifically with regard to the 'Computer Related Inventions ( CRI'S)', followed by the 2015 CRI guidelines, 2016 Guidelines and the revised guidelines for examination of CRI's, 2017.
According to the 2017 CRI guidelines, Computer Related Inventions (CRIs) encompass inventions that entail the use of computers, computer networks or other programmable apparatus and also the inventions which involve features realised either wholly or partially by means of computer or other programmes.
The 2017 guidelines brought some amount of clarification with respect to exclusions expected under section 3(k) of the Patents act, 1970, so as to ensure speedy redressal of the patent applications related to CRI's. It emphasised upon the legislative intent of Joint committee on patent (second amendment) bill, 1999, for attaching the suffix 'per se' to computer programmes. Further, in the guideline it was particularly stated that, Computer programmes are often claimed in the form of systemor method claims with some means indicating the functions of process steps and flow charts. The claims in substance, like method/process, apparatus/system/device, computer program product/ computer readable medium should not belong to the excluded categories and the focus while patenting should be on the underlying substance and not the particular form in which it is claimed.
The recent judgment of Delhi High Court in the case of FeridAllani v. Union of India6 proved to be a cutting edge decision on patentability of computer programmes with technical effect and advancement. In this case, a writ petition was filed against the order of IPAB, wherein it dismissed an appeal against the order of patent office who rejected their patent application on the ground that it was being hit by section 3(k) of the patent act, 1970. The high Court in this case considered the appeal of the petitioners and the three guidelines on CRI's and held that, "the bar on patenting was with 'computer programs per se' specifically and not on all inventions based upon computer program. It further emphasised on the point that, in today's digital world wherein almost all the inventions such as automobiles, microwaves, cars, mobiles etc., and innovation such as artificial intelligence and blockchain technologies, are based upon computer programs, it would be retrograding to hedge such inventions from patentability. Furthermore, the words 'per se' were incorporated to ensure that patentability of genuine inventions developed and based on computer programs was not impeded."
The court in this case further allowed the writ petition and declared thatwhen an invention demonstrates a 'technical effect' or a 'technical contribution' it is patentable, even though based upon a computer program. Further, the court directed the petitioner's patent application to be re-examined in light of the CRI guidelines and established judicial precedents, within a period of two months.
Conclusion: Therefore, wherein the computer programme includes things developed further upon or ancillary thereto, and demonstrates a technical effect or technical contribution, then it can be patentable. The guidelines on CRIs and established judicial precedents like in the case of FeridAllaniv. UOI, shall be taken into consideration while dealing with such patent applications.
1. Section 2(ffc). The Copyright Act, 1957
2. Section 2(o). The Copyright act, 1957
3. Patents ( Second Amendment) bill, 1999. Report of Joint Committee.
4. Guidelines for Examination of Computer Related Inventions (CRIs), 2017.
5. The Ping-Ponging Paradigm of Patenting Computer Programmes in India ("Software Patenting" 1999-2020)by Swaraj Paul Barooah February 12, 2020. Access from: https://spicyip.com/2020/02/the-ping-ponging-paradigm-of-patenting-computer-programmes-in-india-software-patenting-1999-2020.html
6. W.P.(C) 7/2014 and CM APPL. 40736/2019
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