Patentability of Computer Programs in India

A bare reading of Section 3(k) of the Patents Act, 1970 makes it clear that “a mathematical or business method or a computer program per se or algorithms” are not patentable. Does that mean all such computer-related inventions are non-patentable in India? Read on to know the scope of section 3(k) in relation to computer programs.

Previously, the Indian Patent Offices and the judiciary used to limit the granting of patents to computer-related inventions by applying a literal interpretation of section 3(k). However, due to the rapid development of technological innovations, the strict rejection under section 3(k) is being relaxed, and an increasing number of computer programs are being considered for patent registration, subject to certain conditions, some of which are outlined in the Guidelines for Examination of Computer-Related Inventions (2016 guidelines). Though computer programs per se are not patentable, if the following are complied with, they can get patented.

• Para 4.4.4 of the 2016 guidelines says that even concerning hardware/software-related issues, it is necessary to show the “underlying substance” of the invention instead of just showing the particular form in which it is claimed.
• Para 4.4.5 says that if the invention claims a “means” for providing the functionality of the invention, then it shall clearly be defined by the use of physical constructional features and their reference numerals to enhance the intelligibility of claims.
• Further, para 4.4.5 makes it clear that if the specification so provided only supports the performing of the invention by the computer program, then the means plus function claims will be rejected on the ground that these claims are computer programs per se.

Some examples of software innovations that received patent registrations are Google’s method and system for text segmentation (252156), Oracle’s tracking space usage in a database (245515), and eBay’s facilitating micropayments between a plurality of parties (242805), among others.

Accenture Global Service GMPH v. Assistant Controller of Patents (OA/22/2009/PT/DEL) is a noteworthy judgment in this regard, wherein the Controller allowed the registration of an invention involving software by observing that the invention is a system that has the effect of improving the web services and software, thereby not software per se.

Recently, Justice Pratibha M Singh, in the case of Ferid Allani v. Union of India & Ors. (W.P (C) 7/2014 & CM APPL. 40736/2019), has re-iterated that an invention demonstrating “technical effect” or “technical contribution” is patentable even though it is based on a computer program.

Using the aforementioned principles and a careful examination of section 3(k), it can be deduced that the words “per se” are purposefully added so that not all computer-related inventions fall under the purview of section 3(k). Furthermore, specifying the subject matter of the novel invention or its effect, which is not a computer program per se along with the physical constructions, increases the chance of receiving the patent registration.

Vedant Pujari, Partner

Shashank Raj, Senior Associate