Software

An Overview of Software Patenting

The concept of “intellectual property” in India has taken on some epic proportions over the last few years for several reasons. 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. And under traditional principles of intellectual property protection, patent law is to encourage 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 said invention must have novelty and utility. The grant of patent thus becomes industrial property and also called intellectual property. And the computer software is a relatively new recipient of patent protection.

The term “Patent” has its origin from the term “Letter Patent”. This expression ‘Letter Patent’ meant open letter and were instruments under the Great Seal of 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 the inventions done by them should not be infringed by anyone else by copying them or adopting the methods used by them. To save the interests of inventors, the then British rulers enacted the Indian Patents and Design Act, 1911. Concerning the patentability of software-related inventions, it 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.

MEANING OF SOFTWARE PATENTING

The term “software” does not have a precise definition and even the software industries fails to give an specific definition. But it is basically used to describe all of the different types of computer programs. Computer programs are basically 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.

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Though 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. According to Richard Stallman, the co-developer of the GNU-Linux operating system and proponent of Free Software says, “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) which 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 in practice (or used) to produce the effect they intend to provide.

An early example of a software patent:

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

CONCEPTUAL DIFFERENCE BETWEEN COPYRIGHT AND PATENT

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 in order for it to be copyrighted. At the same time, Software Patenting has recently emerged (if only in the US, Japan and Europe) where, Patents give their owners the right to prevent others from using a claimed invention, even if it was independently developed and there was no copying involved.

Further, it should be noted that patents cover the underlying methodologies embodied in a given piece of software. On the otherhand,  copyright prevents the direct copying of software, butdoeso not prevent other authors from writing their own embodiments of the underlying methodologies. However, the issues involved in conferring patent rights to software ar are more complex than taking out copyrights on them. Specifically, there are two challenges that one encounters when dealing with software patents. The first is about the instrument of 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 involved in conferring patent rights to the software are more complex than taking out copyrights on them. Specifically, there are two challenges that one encounters when dealing with software patents. The first is about the instrument of 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 (among them, computer programs), dramatic, musical and artistic works, including films. Under copyright, protection is given only to the particular expression of an idea that was adopted and not the idea itself. (For instance, a program to add numbers written in two different computer languages would count as two different expressions of one idea) Effectively, 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 becomesits copyright ownert. 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. They cost even more paying the lawyers to write the application than it actually cost to apply. Ittypically takesy some years for the application tobet considered, even though patent offices do an extremely sloppy job of considering.

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 rights of fair use which are available to the public. For example, under “fair use,” certain uses 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, offering for sale without his/her 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 are already in use by other programmers when the application is filed.

d) Duration of protection

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

JURISDICTIONS OF SOFTWARE PATENTING

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 TRIPs Agreement

o Software patents under the European Patent Convention

o Computer programs and the Patent Cooperation Treaty

Software patenting under TRIPs Agreement

The WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), particularly Article 27, are 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 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.”

However, there have been no dispute settlement procedures regarding software patents. Therefore, its relevance for patentability in the 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. AHowever, article52 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 which 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 which 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, which provides a unified procedure for filing patent applications to protect inventions. A patent application filed under the PCT is called an international application or PCT application. Under the PCT, International Searching Authorities (ISA) and International Preliminary Examining Authority (IPEA) conduct the international search and preliminary examination.

CURRENT TREND

However, before we start hailing the advent of a new era and equating the patenting of software 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 in which software patenting has already become the order of the day, such as in the US and Japan .

United States

The United States Patent and Trademark Office (USPTO) 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.” i.e. In particular, patents cannot be granted to “scientific truths” or “mathematical expressions” of them. The USPTO maintained the position 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 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 mold rubber, it was a patentable object. Thus, the court essentially ruled that while algorithms themselves 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 US. 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 US. That is the reason, Patenting software has become widespread in the US. As of 2004, approximately 145,000 patents had been issued in the 22 classes of patents covering computer-implemented inventions.

Japan

Software is directly patentable in Japan. In various litigations in Japan, software patents have been successfully enforced. In 2005, for example, Matsushita won a court order barring Justsystem from infringing Matsuhita’s Japanese patent 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 the following: “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 assent from the President of India and has came into effect from 1st Jan., 2005. Apart from the change in pharmaceuticals and agro chemicals, 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 and all applications can be construed as technical applications, obviously 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 firstly 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 specific requirements of the Ordinanceregardingo patentability of software, the software should necessarily have a technical application to the industry or be intrinsic to or “embedded” in hardware. This is to prevent any future litigation or claims of infringements from being raised, which is a distinct probability even after a patent has been granted.

CONCLUSION

India for its part seems to have adopted the more conservative approach of the European patenting norms for software. But the Ordinance definitely has its use and relevance in today’s India, particularly for our growing domestic semi- conductor industry. This, along with tamperingtempering, might definitely 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 the reason 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.