Patentability of Softwares in India:

What is a Computer Program?

Computer program is basically a means to make use of the hardware. Computer program is set of
detailed instructions that regulate interactions between various mechanisms or peripherals of a
device. Making it perform a task based on the receipt of certain input from a user. 
It is a popular myth regarding a computer program that the output is only in the form of a
graphics, text or any other form of data or information, but in terms of patent of computer
program it may be also in form of any effect perceived by the users. For e.g. movement of a die
cast on happening of a certain event controlled by software, the release of airbag upon receipt of
command from the computer based on the external stimulus of contact.
Typically, a computer program consists of a mathematical algorithm. A mathematical algorithm
need not be only related to numbers, but it can also define non-mathematical problems as well.
Basically, the algorithm represents the act of thinking and for every invention this act is
penultimate to the invention itself.
Protection to Computer Program
Ordinarily, there are two forms of intellectual right protection for computer programs, in the
form of copyrights and patents. While copyright law allows for the protection of the specific
code that has been written by a programmer, it does not protect the idea behind the code or
prevent the creation of a different computer program achieving the same functionality using a
separate code. Alternatively, patents protect the owner’s right to prevent someone from using the
claimed idea even though, others may create a similar function using a separate, independently
developed code with no plagiarism in the process. Ironically, however, the patent protection for
computer programs in India is not in toto and can only be achieved if the software is a part of an
invention which is new, industrially applicable and follows all requirements laid down in law.
Patent Law Protection
Generally, the patent regime in India excludes the registration of softwares, computer programs
per se and other similar algorithms as under Section 3(k) of the Indian Patent Act, 1970. The
term per se used in the provision must be given special emphasis as it does not strictly and
objectively reject the possibility of a computer software from being granted a patent. In fact, it
merely places a caveat that a computer programs by itself or intrinsically cannot claim patent
protection but, may be granted a patent if can be established that the software has a practical
application in the industry, is novel and contains an inventive step as a part of an invention which
is a whole of which the software is a part. It is essential that the computer program contains a
certain inventive step which has been made a requirement as per the law and was established as
an integral part of patent examination by the Hon’ble Ape Court in Biswanath Prasad Radhey
Shyam vs. Hindustan Metal Industries in which the key tests laid down were:
1. More than a mere workshop improvement
2. In case of improvement patent, the improvement itself must constitute an inventive step.
 3. If the alleged invention constitutes known elements or a combination of such, the result
must be new, substantially cheaper or more efficient than the status quo.
Claims directed as “Computer Programme per se”: Claims which are directed towards computer
programs per se are excluded from patentability, like,
a) Claims directed at computer programmes/ set of instructions/ Routines and/or Sub-routines.
b) Claims directed at “computer programme products” / “Storage Medium having instructions” /
“Database” / “Computer Memory with instruction” stored in a computer readable medium.
The legislative intent to attach suffix per se to computer programme is evident by the following
view expressed by the Joint Parliamentary Committee while introducing Patents (Amendments)
Act, 2002: “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.”1
In the examination of the computer program claiming protection, it is noted that the main
essence, contribution or function of the proposed invention does not merely lie in the computer
program but, through a system which utilizes the computer program in its application. This
implies that the primary consideration for the grant of a patent in the case of computer program
is that of the hardware utilizing the program and not the program per se.
The Patent Office has created certain guidelines with respect to the patentability of softwares
which are periodically revised. The main features of the guidelines are as follows:
1. Software per se cannot be patented:
Hence, the regulation strictly states that can never be patented unless embedded in a
novel hardware or is combined with a unique device in a manner that both the software as
well as hardware is rendered functionless without each other.
2. Software can be patented in combination with some hardware:
The regulation states that software per se can be patented if embedded in hardware via a
method involving technical advancement when compared to the existing knowledge or is
combined with a unique device in a manner that both the software as well as hardware is
rendered functionless without each other.
3. Examiners must rely on a three-stage test for examination of such applications:
a. Properly construing the claim and identification of the practical application and
contribution to the hardware and computer program.
b. If the contribution lies on the computer program, the examiner must check
whether the claim lies in conjunction with a hardware through a novel method and
only then proceed to the other steps to check patentability.
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Patent Manual, 2019
 c. If the contribution relies only on the computer program, mathematical method,
business model or algorithm; the claim shall be denied.
4. Requirement of detailed disclosure:
The guidelines specify the requirements that the applicant must specify such as the
invention, its application and method of using it. These disclosure requirements will help
ensure a sufficiency of the patent application.
Points to remember while applying
1. All specification of the inventions related to the implementation should be drafted to
clearly define the hardware features applicable
2. Drawings of the hardware apparatus in the recommended form must be made as laid
down by law
3. The specification must clearly define the amalgamation of software and hardware to
show the synergy and symbiosis between the two aspects of the invention
4. The claim should also highlight the reference numbers with respect to the hardware of the
invention
5. The Indian Patent Regime does not grant patent to innovations in Business Method as
innovation is an expected component of business and competition and thus, even business
methods under the veil of computer program would be disqualified as they would attract
the restrictions in Section 3(k) which are absolute in said regard
6. Several examiners consider that the novelty and inventive step lies in the program and
software; thus, it is imperative to highlight the amalgamation of hardware and software
7. When the overall system i.e. the amalgamation of hardware and software is being
claimed, the emphasis should be laid on the constructional features of the system and the
software should be mentioned as a part that works in the background to increase the
efficiency of the hardware aspect of the system
8. Functionality of the system should not be kept the key aspect of the application as several
examiners believe that the functionality does not attract inventiveness or novelty in many
cases
9. Terms such as algorithm, module, nodes, instructions etc. must be substantially explained
such that the recitation and use of these terms does not imply the patent application is a
computer program per se
10. The disclosure of the utility of the system, in whole and not parts, and its usefulness to
the industry is crucial as it ensures that the program is also protected.
Examples of Patent Protection
Apple’s patent on media management program
In May 2017, the Kolkata Patent Office granted a patent (Application No. 461/KOLNP/2009)
to Apple on a ‘method for browsing data items with respect to a display screen associated with a
computing device and an electronic device’. Notably, one of the issues raised during the
examination of the patent application was whether the invention fulfilled the novel hardware
requirement. Apple argued that its invention brings about an “improved technical effect” and
therefore, should be patentable. Surprisingly, Apple’s argument was accepted by the patent
office which accordingly granted Apple a patent on the said invention.
Patent granted on Google for information retrieval system
Most recently, Google was granted a patent on an invention titled, ‘phrase identification in an
information retrieval system’ (Application No. 1261/MUMNP/2007). In this case too, Google
argued that its invention is not an algorithm or a computer program per se, “but provides a
technical solution to a technical problem of how to automatically identify phrases in a document
collection”.
The trouble with the grant of the patents is that the subject-matter of these inventions in all the
cases was business methods. The internet companies argued that their inventions included a
‘novel hardware’ and therefore, did not fall afoul of section 3(k). Even though ‘novel hardware’
is not defined in the CRI Guidelines (leaving patent examiners free to interpret the meaning of
the phrase), it is worth noting that business methods are absolutely prohibited under Indian law
and the ‘novel hardware’ requirement is applicable only when the invention is a computer
program. Such patents indicate that while software/business methods are prohibited under Indian
patent laws, patent offices in the country show a proclivity towards granting such patents.
Patent granted to Accenture Global for data mapping document
The applicant sought for a patent on a method to generate a data mapping document
(Application No. 1817/MUM/2007). The objection against the method's technical effect being
unidentifiable, the applicant submitted that the present claims recite "technical solution to a
technical problem of the need for a data document design system and design tools that addresses
one of the most important technical challenges faced by database systems is data migration."
After analysing the inventions on merits, the Patent Office observed that the invention is not
software per se, it is rather a system having web-services and software and thus, is not falling in
the category of section 3(k) and patent was granted in May 2013.
Patents granted to Facebook
In 2009, Facebook sought a patent on a method "for generating dynamic relationship-based
content, personalized for members of the web-based social network". The objections against the
grant were 'the method being nothing, but an algorithm implemented through software thus
falling under Section 3(k) and being non- patentable.' The applicant contended that section 3(k)
was not applicable in this case because the invention "implements a technical process and has a
technical effect" and further went on to explain the intricacy of the method. These amendments
to the claims satisfied the Patent Office's objections and thus it granted the patent in February
2017.
Another patent was granted to Facebook on 25th April 2017 "for a method of providing access to
user profile data maintained by Facebook to third-party application". Facebook submitted that
"the present invention included hardware limitation and provided technical improvements and
benefits like checking privacy setting associated with the user profile and based on the privacy
setting the access is provided to the third-party application and the third-party application
personalizes the user content data." The Patent Office concluded that this doesn't fall under the
purview of Section 3(k), and duly granted it a patent.