An Overview of Software Patenting

For several reasons, the concept of “intellectual property” in India has taken on some epic proportions over the last few years. One of the primary reasons, attributable to the growing awareness among the urban Indian population, is the significance and, more importantly, the commercial benefits of protecting its intellectual property rights both within and outside India. Under traditional principles of intellectual property protection, patent law encourages scientific research, new technology, and industrial progress.

The fundamental principle of patent law is that the patent is granted only for an invention, i.e., new and useful; the story must have Novelty and utility. The grant of a patent thus becomes industrial property, also called intellectual property. The computer software is a relatively new recipient of patent protection.

The term “Patent” originates from the term “Letter Patent”. The expression ‘Letter Patent’ meant open letter and was an instrument under the Great Seal of the King of England addressed by the Crown to all the subjects. The Crown conferred certain rights and privileges on one or more individuals in the kingdom. In the latter part of the 19th century, new inventions in the field of Art, process, method or manner of manufacture, machinery, and other substances produced by manufacturers were increased.

The inventors became very interested that their inventions should not be infringed by anyone else by copying them or adopting the methods they used. To save the interests of inventors, the then-British rulers enacted the Indian Patents and Design Act of 1911. The patentability of software-related inventions is currently one of the most heated areas of debate. In recent years, the Software has become patentable in most jurisdictions (although with restrictions in certain countries, notably those signatories of the European Patent Convention or EPC), and the number of software patents has risen rapidly.


The term “software” does not have a precise definition, and even the software industry fails to give a specific definition. But it is used to describe all the different computer program types. Computer programs are divided into “application programs” and “operating system programs.” Application programs are designed to do specific tasks to be executed through the computer. The operating system programs are used to manage the computer’s internal functions to facilitate the use of the application program.


However, the term ‘Software patent’ does not have a universally accepted definition. One definition suggested by the Foundation for a Free Information Infrastructure is that a software patent is a “patent on any computer program’s performance realized using a computer program. Richard Stallman, the co-developer of the GNU-Linux operating system and proponent of Free Software, states, “Software patents are patents which cover software ideas, ideas which you would use in developing Software.

That is, Software patents refer to patents that could be granted on products or processes (including methods) that include or may include Software as a significant or at least necessary part of their implementation, i.e., the form in which they are put into practice (or used) to produce the effect they intend to provide.

An early example of a software patent:

On September 21, 1962, a British patent application entitled “A Computer Arranged for the Automatic Solution of Linear Programming Problems” was filed. The invention concerned efficient memory management for the simplex algorithm, which Software may implement purely. The patent was granted on August 17, 1966, and seems to be one of the first software patents.


Software has traditionally been protected under copyright law since code fits quite easily into the description of a literary work. Thus, Software is protected as works of literature under the Berne Convention, and any software written is automatically covered by Copyright. This allows the creator to prevent another entity from copying the program, and there is generally no need to register code for it to be copyrighted.

At the same time, Software Patenting has recently emerged (if only in the U.S., Japan, and Europe). Patents give their owners the right to prevent others from using a claimed invention, even if it was independently developed and no copying involved. Further, it should be noted that patents cover the underlying methodologies embodied in a given piece of Software. On the other hand, Copyright prevents the direct copying of Software but does not prevent other authors from writing their embodiments of the underlying methodologies. However, the issues conferring patent rights to Software are more complex than taking out copyrights on them. Specifically, one encounters two challenges when dealing with software patents. The first is about the instrument of the patent itself and whether the manner of protection it confers is suited to the software industry. The second is the nature of Software and whether it should be subject to patenting.

However, issues conferring patent rights to the Software are more complex than taking out copyrights on them. Specifically, one encounters two challenges when dealing with software patents. The first is about the instrument of the patent itself and whether the manner of protection it confers is suited to the software industry. The second is the nature of Software and whether it should be subject to patenting.

a) Different Subject Matters

Copyright protection extends to all original literary works (computer programs), dramatic, musical, and artistic works, including films. Under Copyright, protection is given only to the particular expression of an adopted idea, not the idea itself. (For instance, a program to add numbers written in two different computer languages would count as two other expressions of one picture.) Independent rendering of a copyrighted work by a third party would not infringe the Copyright. Generally, patents are conferred on any ‘new’ and ‘useful’ Art, process, method, or manner of manufacture, machines, appliances, or other articles or substances produced by manufacture. Worldwide, the attitude towards the patentability of Software has been skeptical.

b) Who may claim the right to a patent /copyright?

Generally, the author of a literary, artistic, musical, or dramatic work automatically becomes its copyright owner. On the other hand, the patent is granted to the first to apply for it, regardless of who the first to invent it was. Patents cost a lot of money. It costs even more to pay the lawyers to write the application than it costs to apply. It typically takes some years for the application to be considered, even though patent offices do an extremely sloppy job of thinking.

c) Rights conferred

Copyright law gives the owner the exclusive right to reproduce the material, issue copies, perform, adapt, and translate the work. However, these rights are tempered by the righteousness of fair use available to the public. For example, under “fair use,” certain services of copyright material would not be infringing, such as use for academic purposes, news reporting, etc. Further, independent recreation of a copyrighted work would not constitute infringement.

Thus, if two different companies independently developed the same code, neither would have a claim against the other. A patent confers an absolute monopoly on the owner, which is the right to prevent others from making, using, or offering for sale without their consent. In general, patent protection is a far stronger method of protection than Copyright because the protection extends to the level of the idea embodied by Software and injuncts ancillary uses of an invention.

It would weaken Copyright in Software that is the base of all European software development because independent creations protected by Copyright would be attackable by patents. Many patent applications cover very small and specific algorithms or techniques that are used in a wide variety of programs. Frequently, the “inventions” mentioned in a patent application have been independently formulated and used by other programmers when the application is filed.

d) Duration of protection

The TRIPS agreement mandates at least 20 years for a product patent and 15 years for a process patent. For Copyright, the agreement prescribes a minimum period of the author’s lifetime plus seventy years.


Substantive law regarding the patentability of Software and computer-implemented inventions and case law interpreting the legal provisions are different under different jurisdictions.

Software patents under multilateral treaties:

o Software patents under the TRIPs Agreement

o Software patents under the European Patent Convention

o Computer programs and the Patent Cooperation Treaty

Software patenting under the TRIPs Agreement

The WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), particularly Article 27, is subject to debate on the international legal framework for the patentability of Software and on whether Software and computer-implemented inventions should be considered as a field of technology.

According to Art. 27 of the TRIPS Agreement, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step, and are capable of industrial application. Moreover, (…) patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology, and whether products are imported or locally produced.” there have been no dispute settlement procedures regarding software patents. Therefore, its relevance for patentability in computer-implemented business methods and software information technology remains uncertain since the TRIPs agreement is subject to interpretation.

Software patents under the European Patent Convention

The EPO and other national patent offices have issued many patents for inventions involving Software within European Union member states since the European Patent Convention (EPC) came into force in the late 1970s. However, article EPC excludes “programs for computers” from patentability (Art. 52(2)) to the extent that a patent application relates to a computer program “as such” (Art. 52(3)). This has been interpreted to mean that any invention that makes a non-obvious “technical contribution” or solves a “technical problem” in a non-obvious way is patentable, even if a computer program is used in the invention.

Computer-implemented inventions that only solve a business problem using a computer, rather than a technical problem, are considered unpatentable as lacking an inventive step. Nevertheless, the fact that an invention is useful in business does not mean it is not patentable if it also solves a technical problem.

Computer programs and the Patent Cooperation Treaty

The Patent Cooperation Treaty (PCT) is an international patent law treaty providing a unified procedure for filing patent applications to protect inventions. A patent application filed under the PCT is called an international or PCT application. Under the PCT, International Searching Authorities (ISA) and International Preliminary Examining Authority (IPEA) conduct the global search and preliminary examination.


However, before we start hailing the advent of a new era and equating software patenting in India, it would be well worth our while to pause and examine the realities of software patenting. We could do this by looking at examples of countries where software patenting has already become the order of the day, such as the U.S. and Japan.

United States

The United States Patent and Trademark Office (USPTO) has traditionally not considered Software patentable because, by statute, patents can only be granted to “processes, machines, articles of manufacture, and compositions of matter.” i.e., patents cannot be given to “scientific truths” or “mathematical expressions” of them. The USPTO maintained that Software was, in effect, a mathematical algorithm and, therefore, not patentable into the 1980s. This position of the USPTO was challenged with a landmark 1981 Supreme Court case, Diamond v. Diehr. The case involved a device using computer software to ensure the correct timing when heating or curing rubber. Although the Software was an integral part of the device, it also had other functions related to real-world manipulation. The court then ruled that it was a patentable object as a device to mold rubber. Thus, the court essentially ruled that while algorithms could not be patented, devices that utilized them could.

But in 1982, the U.S. Congress created a new court, i.e., the Federal Circuit, to hear patent cases. This court allowed the patentability of Software to be treated uniformly throughout the U.S. Due to a few landmark cases in this court, by the early 1990s, the patentability of Software was well established. Moreover, Several successful litigations show that software patents are now enforceable in the U.S. That is the reason Patenting software has become widespread in the U.S. As of 2004, approximately 145,000 patents had been issued in the 22 classes of patents covering computer-implemented inventions.


Software is directly patentable in Japan. In various litigations in Japan, software patents have been successfully enforced. 2005, for example, Matsushita won a court order barring Justsystem from infringing Matsuhita’s Japanese patent of 2,803,236 covering word processing software.

Indian Position

Concerning computer software, in the Patents (Amendment) Act, 2002, the scope of non-patentable subject matter in the Act was amended to include “a mathematical method or a business method or a computer program per se or algorithms. However, the recent amendment changes (Ordinance, 2004), which amends the Patents Act, 1970, have been promulgated after receiving permission from the President of India and have come into effect from January 1, 2005. Apart from the change in pharmaceuticals and agrochemicals, one of the seminal amendments this Ordinance seeks to bring is to permit the patenting of embedded Software.

Hence, the amendment means that while a mathematical or a business method or an algorithm cannot be patented, a computer program with a technical application in any industry or incorporated in hardware can be patented. Since any commercial software has some industry application, all applications can be construed as technical. It opens all software patenting. In any case, any company seeking to file a patent application for Software under the Ordinance should ensure that its invention first follows the three basic tests:

o Inventive Steps

o Novelty

o Usefulness

Therefore, the Software sought to be protected mustn’t be merely a new version or an improvement over an existing code. Further, according to the Ordinance requirements regarding software patentability, the Software should necessarily have a technical application to the industry or be intrinsic to or “embedded” in hardware. This is to prevent future litigation or claims of infringements from being raised, which is a distinct probability even after a patent has been granted.


India seems to have adopted the more conservative approach of the European patenting norms for Software. However, the Ordinance has its use and relevance in today’s India, particularly for our growing domestic semiconductor industry. Along with tampering, this might ensure judicious use of patent protection while allowing the industry to grow through innovations and inventions, thereby mitigating the risks of trivial patents choking the life out of real innovations and inventions. This is why a patent should always be treated as a “double-edged sword” to be wielded with caution and sensitivity.

Roberto Brock
the authorRoberto Brock
Snowboarder, traveler, DJ, Swiss design-head and HTML & CSS lover. Doing at the nexus of art and purpose to develop visual solutions that inform and persuade. I'm a designer and this is my work. Introvert. Coffee evangelist. Web buff. Extreme twitter advocate. Avid reader. Troublemaker.