LEGAL ASPECTS OF SOFTWARE PATENTING

-Hari Prasad, IP Dome

Friday, 27/09/2013 at the offices of Giridhar & Sai Associates, Advocates, IP Dome organised a focused group interaction with Mr. Naveen Andrew, Assistant Controller, Patents office, Chennai. The small audience comprised IT entrepreneurs, faculty members of IIT working in the area of computer science and Information Technology, Dean of the Industrial Consultancy and Sponsored Research Office of IIT, and lawyers.Mr. Andrew made a remarkably pertinent presentation on the ‘Legal Aspects of Software Patenting’.

Mr. Andrew joined as examiner of patent and design with Patent office in 2002, with a BE (ECE) & ME in Communication systems engineering. He has PG Diplomas in IPR and in German language. In 2006 he underwent the in EPOQUE training of the EPO in Berlin and also participated in seminar “EAST MEETS WEST 2012” conducted by EPO Austria. He was promoted as Assistant Controller in 2009. Swapna Sundar, CEO of IP Dome and Mr. Andrew, along with DrVinodSurana formed one viva-voce panel for the Patent Agent Exams held in 2013.

Mr. Andrew began by explaining that Software was a fit and appropriate subject for copyright protection. Computer software is “computer program” within the meaning of the Copyright Act.  Computer programs are included inthe definition of literary work under the Copyright Act.According to the Copyright Act, a computer program is a “set of instructions expressed in words, codes, 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.” Software, per se, are intangibles and not protected by patents but are protected by copyrights as applicable to literary and aesthetic works. A computer program is therefore dealt with a literary work and the law and practice in relation to literary works will apply to computer programs. A computer program can be reproduced in any material form including the storing of it in any medium by electronic means on CDs, DVDs, USBs or Floppys which are now obsolete.

The essential elements of a computer program are:

 1.  It is a set of instructions expressed in:

·         words

·         codes

·         schemes or

·         in any other form, including a machine readable medium

2.  capable of causing a computer to:

·         perform a particular task or

·         achieve a particular results

What are not patentable?

A mathematical algorithm or computer programs are not held as inventions because they merely describe an abstract idea. They merely solve a mathematical problem and not a practical application or idea. They are considered mental acts as any professional could do with requisite skills.

Storage media such as CDs, DVDs and Flash drives are not patentable as such due to lack of constructional features / lack of technical features. Some typical software content which arenot patentable are:

•       Methods implemented by algorithms /software products

•       Editing functions, user-interface features, compiling techniques , databases..

•       OS functions

•       Program algorithms

•       Menu arrangements

•       Display presentations/arrangements

•       Program language translations

What are patentable?

Patent law protects the technical idea underlying the invention, i.e. the functional elements, while copyright protects the form in which the idea is expressed, i.e. originality of expression but not the underlying idea or concept or function. In fact, the technicality / functionality of the algorithm or program can be protected , if the same is claimed in method steps, but not the source codes, per se.

The patentee would have to bring out the technical feature of the program in claims, demonstrating the solution of a technical problem (in clear method steps), in co-ordination / collaboration with constructional features (or) by projecting ( in claims) by what constructional features the claimed method is implemented. The technical solution provided has to be novel and inventive.

System/device or apparatus claims are not recommended. However, system claims maybe allowed when the technical functions are performed in co-ordination with new or novel hardware which may result in a technical solution. In this case the hardware has to be supported with description / illustrations. Application claims may be allowed.

Mr. Andrew went on to provide some examples of patents that had been granted and others that had been rejected from his own experience as Controller to explain the nuances of software patenting. 

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