SOFTWARE PATENTS TRANSITION IN JURISPRUDENCE

Shantanu Jugtawat*

Software is a global business.
Software technology is at least as expensive to develop as hardware technology but very inexpensive to copy. Software is now the main component for determining the success of a particular commercial application of computer technology¹. They now focus not so much on selling their proprietary hardware but more on providing integrated computing solutions to business problems, of which the software component is a crucial component from the customer point of view.

Software patents are one of the most contentious issues in Intellectual Property Rights worldwide, and increasingly, in India. The growing economic significance of computers and computer programs gives software patents this controversial status. It can be noted that after biotechnology patents; it is software patents which really attracts major public discussions on IP rights.

Position in U.S.
The USPTO (the American patent office) has traditionally not considered software to be patentable because by statute patents can only be granted to “processes, machines, articles of manufacture, and compositions of matter”. In particular patents cannot be granted to “scientific truths” or “mathematical expressions”. This means that most of the fundamental techniques of software engineering have never been patented. The USPTO maintained this position, that software was in effect a mathematical algorithm, and therefore not patentable into the 1980s. The position of the USPTO was challenged with a landmark 1981 Supreme Court case, Diamond v. Diehr. The case involved a device that used computer software to ensure the correct timing when heating or curing, rubber. Although the software was the integral part of the device, it also had other functions that related to real world manipulation. The court then ruled that as a device to mould rubber, it was a patentable object. The court essentially ruled that while algorithms themselves could not be patented, devices that utilized them could. This ruling wasn’t as straightforward as many would have liked, forcing many electronic device makers into the courts to establish that their inventions were in fact patentable.

Position under European Union
When we look at the European Union we see that software is patentable in EU, provided they make a technical effect. Though the European Parliament rejected the Computer Implemented Inventions Directive in July 2005, the position with regard to software patenting remains more or less the same in EU member states.

The point to be considered here is whether in a particular case an application for a software-related invention is to be regarded as a patent application for a computer program as such and therefore not patentable. In such a case the above provisions give no direct help because the word “invention” for the purposes of the 1977 Act is not defined in a positive sense. Section 1(2) only lists some of the cases, which are clearly outside the scope of patent protection. The list is not exhaustive. If the facts of a particular case fall outside the list stipulated in Section 1(2) it does not necessarily follow that the subject matter is patentable. The situation is particularly problematic when the facts of a particular case (such as a software related invention) seem to lie on the boundary of the provisions. To which side of the boundary will the case fall depend very much on the interpretation of the claim at hand and of the 1977 Act given all the facts in each particular case. In interpreting Section 1(2) of the 1977 Act the decisions from the Technical Board of Appeal of the European Patent Office are extremely relevant.

Software Patent v. Software Copyright
Software patents are not the same as software copyright. Under international agreements, such as the WTO’s TRIPs Agreement any software written is automatically covered by copyright. This allows the owner to prevent another entity from directly copying the source code and there is generally no need to register code in order to get copyright protection. In fact, one of the most recent EPO decisions clarifies the distinction, stating that software is patentable, because it is basically only a technical method executed on a computer, which is to be distinguished from the program itself for executing the method, the program being merely an expression of the method, and thus proteced by copyright.

Patents² and copyright form complementary means for protecting software innovations. Patents cover the underlying methodologies embodied in a given piece of software, or the function that the software is intended to serve, independent of the particular language or code that the software is written in. Copyright protects against the direct copying of some or all of a particular version of a given piece of software, but do not prevent other authors from writing their own embodiments of the underlying methodologies. Copyright can also be used to protect a given proprietary set of data from being copied while still allowing the author to keep the contents of said set of data a trade secret.

Position in India
The position on software patents in India is close to that of EU member countries. If we are to search the definition of the term ‘software’ or ‘computer programe’ under the Patent laws in India, we shall not succeed³. The Patents Act refers to computer programs in Section 3, which deals with inventions that cannot be patented. According to Section 3(k), a computer program per se is not patentable. This makes us think about what the term ‘per se’ stands for in this context. According to the Webster’s Encyclopedic Unabridged Dictionary, the term ‘per se’ refers to “by, of, for, or in itself; intrinsically”. If we are to use this definition we can well assume that the software as such cannot be patented. But don’t the same words of the provision tell us something more—that if the claimed invention is some thing more than ‘mere’ software, it is patentable. In India an attempt was made through the Patents Amendment Ordinance 2004 to further extend the scope of software patenting to any computer program that has industrial application and to those that are used in combination with hardware. But there was strong opposition within and outside the Parliament and as a result this was deleted from the subsequent Patents (Amendment) Act, 2005. Still, an invention shall not become unpatentable in India merely because it was implemented with software. Like the EU countries, in India also the gaining of patent protection for software depends more on the drafting skills of the Patent Engineer. If the claims are drafted in such a way as to reflect that the invention is not software per se, it shall qualify for patent protection.

Conclusion
From the detailed examination of the above cases, a number of important trends may be identified.
In determining the patentability of a claim, the emphasis is now firmly on looking at the invention as a whole. If an invention as a whole can be characterised as technical then it qualifies as a patentable subject matter. The key to deciding whether an invention has a technical character is to look at the effect, result, or contribution that the invention makes relative to the prior art. If the effect, result or contribution made is physical in nature or involves changes in physical entities then it is likely (but not necessary) that the invention has a technical character and hence is patentable.

First, an invention is to be characterised by its effect and not by its structure or form. Secondly, the invention as a whole should be looked at when characterising its effects. A common thread throughout the guidelines is the emphasis on the technical nature of an invention. The terms “technical effects”, “technical characters” and “technical contributions” are mentioned frequently through the guidelines. However, the guidelines give no real help in defining the term “technical”. It is by no means clear what being “technical” means; indeed it is not clear what “technology” means. Nonetheless, it is now clear that the question of patentability is distinct from the question of whether there is a sufficient inventive step to warrant the grant of a patent. First, an “invention” for the purposes of Article 52 must be made. Only then will the question of whether the invention is significant enough for patent arise.

Distinction made by European Patent office in between the software and program itself is very controversial as it is very difficult to distinguish software from the program because software is nothing but the collection of programs. So to say that software is a technical method which is to be executed by the computer itself, program being merely the expression of the technical method only subject to the copyright protection is very difficult to identify.

By focusing on the effect or contribution of an invention as a whole, instead of looking at individual elements, the current approach taken in the UK/EPO towards patentability of software-related inventions has the effect of widening the scope of protection for such inventions. Inventions regarded, as outside the scope of patent protection prior to the 1985 EPO guidelines might now become patentable subject matter using the current approach. The position is getting closer to (but not quite the same as) that in the US where virtually all algorithms are protectable by patents if accompanied by some non-token post-solution activity. It is likely that most of these cases would be regarded as relating to patentable subject matter in the US. Whether the current trends in the UK/EPO will develop in the same increasingly liberal way as in the US remains to be seen.

Still, an invention shall not become unpatentable in India merely because it was implemented with software. Like the EU countries, in India also the gaining of patent protection for software depends more on the drafting skills of the Patent Engineer. If the claims are drafted in such a way as to reflect that the invention is not software per se, it shall qualify for patent protection.

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*National Law Institute University, Bhopal.

1 This shift in focus is reflected by the marketing strategy of most computer vendor companies.

2.Patents, give their owners the right to prevent others from using a claimed invention, even if there was no copying involved.

3 The Copyright Act, 1957 defines a computer program under Section 2 of the Act as “a set of instructions expressed in words, codes, and schemes or in any other form, including a machine-readable medium, capable of causing a computer to perform a particular task or achieve a particular result”.