Question by Kunal Bajpai
Jurisdiction – India, USA, Australia
Software per se cannot be patented in India. Software used in combination with hardware, however, can be granted patent protection.
A computer programme is defined as a set of instructions expressed in words, codes, schemes or in any other form which can cause a computer to perform a particular task or achieve a particular result. This is essentially what software which is defined as a ‘computer programme.’
As per section 3(k) of the Patents Act, 1970 a computer programme per se is not an invention. Hence a computer programme by itself cannot be given patent protection because patents are only granted for inventions.
The words ‘per se’ were introduced in this section because patents can still be granted if the computer programme is used in combination with hardware. The Guidelines on Computer Related Inventions released by the Patent Office state that if a computer programme is used in conjunction with a novel hardware, then this combination can be granted patent protection. Thus for a computer programme to be granted a patent, it must be used together with a new hardware.
The source code and the object code of the software can be protected by copyright in India. It would be classified as a literary work. Any direct copying of the code would be literal copyright infringement and any copying of the structure, sequence or organization (SSO) of the computer programme would constitute non-literal infringement. Indian courts, however, have not dealt with the issue of non-literal copying so far and this doctrine is mostly recognized in the US.
Unless there is a contract to the contrary, the copyright would vest with the author of the software.
American patent law does not prohibit patent protection for software which means that software in the US is patentable as long as the software is new and useful (Diamond v. Diehr). To obtain patent protection, the software must be a process, machine, manufacture, composition of matter or a new and useful improvement (35 U.S. Code § 101). Further, the software cannot be an abstract idea because such ideas, even if executed through a computer, are not patentable (Alice Corporation v. CLS Bank).
What constitutes an ‘abstract idea’ has not been explained. However, some illustrative examples of abstract ideas are – fundamental economic practices, certain methods of organizing human behaviour and mathematical formulae or relationships. The US Patent Office has also released hypothetical examples to clarify the meaning of the phrase. For instance, software that extracts malicious code from electronic communications by following a specific process would not be an abstract idea. Therefore, novel software that is directed towards isolating and eradicating computer viruses would be eligible for patent protection.
Similarly, a patent was also granted for software that was a logical model of a computer database because it was not abstract (Enfish LLC v. Microsoft). A patent, however, was denied to an MRI machine because it was an abstract idea, which shows the lack of uniformity in interpreting what qualifies as an ‘abstract idea.’
One of the most prominent tests (though not the only) for determining patentability of processes, which would include processes executed through software, is the ‘machine-or-transformation test’ (Bilski v. Kappos). As per this test, the process must be tied to a particular machine or lead to the transformation of an article. Thus if the software is tied to particular machine or transforms an article, it would have a strong likelihood of obtaining a patent.
Like the US, Australia does not prohibit software patents. A software would be granted patent protection if it satisfies the following requirements under section 18 of the Australian Patents Act –
- It should be a manner of manufacture;
- It should be novel;
- It should involve an inventive step; and,
- It should not be secretly used before the priority date.
The software, however, cannot be a mere business method or scheme; the software must innovate the manner in which the computer carries out the method or scheme (Commissioner of Patents v. RPL Central Pty Ltd.).
The validity of the patent granted to an invention that improved the method of producing curved images on a computer screen was upheld in IBM v. Commissioner of Patents because the algorithm used by IBM produced a “commercially useful effect.” Further, an invention that could use computers to store and retrieve Chinese characters that are difficult to generate on a computer was also granted a patent (CCOM v. Jiejing).
In both Australia and the US the source code and object code of the software are independently also protected by copyright.
Featured image from here.
 Section 2(ffc), Copyright Act, 1957.
 Section 2(o), Copyright Act, 1957.
 The date of first filing of the patent application.
 (1991) 33 FCR 218.