What are patents? What are the
requirements of patentability?
Can software be patented?
A. Background:
A patent is a form of industrial property which
may be broadly described as a monopoly right conferred by the state to an
inventor to industrially and commercially exploit his invention at the cost of
making a complete disclosure of the details of his invention. A patent is thus
a statutory privilege granted by the Government to an inventor, and to
other persons deriving their rights from the inventor, for a fixed period of
years, to exclude other persons from manufacturing, using or selling a patented
product, or from utilising a patented method or process. At the expiration of
the period of the patent, the patented invention is available to the general public
or as it is sometimes put, falls into the public domain.
B. Object of Patent Law:
In the case of Bishawanath Prasad Radhey Shyam v.
Hindustan Metal Industries[1],
the apex court outlined the objectives of patent law as under:
‘[T]he object of patent law is to encourage
scientific research, new technology and industrial progress. Grant of exclusive
privilege to own, use or sell the method or the product patented for a limited
period stimulates mew inventions of commercial utility. The price of the grant
of monopoly is the disclosure of the invention at the Patent Office, which
after expiry of the fixed period of monopoly, passes into the public domain.’
C. Requirements
of Patentability:
A patent confers a statutory privilege on an inventor
i.e. that there is no common law of patents.2 As seen above, India
became a signatory to the TRIPS Agreement in 1995 and as such was bound to
embody the principles contained therein into its domestic intellectual property
legislation.
Keeping in mind its obligations under TRIPS, the
Patents Act, 1970 came to substantially amended in 2002 and again in 2005. In
light of the TRIPS Agreement, the Patent Act, 1970 prescribes that an invention
must satisfy the trinity requirements of novelty, innovativeness and usefulness
in order to receive a patent under the Act.
.
i.
Test 1: Trinity requirements:
As
stated above, India as a signatory to TRIPS, has adopted the trinity
requirements as specified therein in order to ascertain the patentability of an
invention. Before considering these requirements in detail and whether the
invention satisfies these requirements, let us consider some pertinent
definitions under the Act.
patent: patent means a
patent for any invention granted under this Act[2]
invention: invention means a
new product or process involving an inventive step and capable of industrial
application[3]
inventive step:
a feature of an invention that involves technical advance as compared to the
existing knowledge or having economic significance or both and that makes the
invention not obvious to a person skilled in the art[4]
capable of
industrial application: capable of being made or used in an industry[5]
new invention:
any invention or technology which has not been anticipated by publication in
any document or used in the country or elsewhere in the world before the date
of filing of patent application with complete specification, i.e. the subject
matter has not fallen in public domain or that it does not form part of the
state of the art[6]
Therefore,
the criteria for an invention to be patentable are,
(1)
novelty
(2)
inventive step
(3)
utility
- Novelty:
The first ingredient for
an invention is that it must be new product or a new process. Novelty means what
is new and original, never seen or done before. An invention is taken to be
new if it does not form a part of the state-of-the-art. In order to be
patentable, the new subject must involve invention over what is old. It is not
essential that the invention should be anything complex or complicated. It must
merely be of such nature that it involves a technical advance as compared to
the existing knowledge. As observed by Cotton LJ in Blakey & Co. v.
Lathem & Co.[7]
‘To be new in the
patent sense, the novelty must be shown in the invention. It is not enough that the purpose is new or
that there is novelty in the application, so that the article produced is in
that sense new. There must be novelty in the mode of application.’
In view of this
principle, the Court of Appeal in England in Fomento v Mentomore[8] denied patent rights
to a designer of an improved design of a ball-point pen, on the grounds that
the inventor himself had published a description of making ball point pens and
had made two pens embodying the invention available to the members of the
public before filing the patent application.
2.
Inventive step:
As seen above, an ‘inventive
step’ is one which makes the invention ‘non-obvious to a person skilled
in the art’. In other words, if the invention is obvious to the
person skilled in the art, it cannot be said to involve an inventive
step. After the Amendment in 2005, the definition of inventive step
has been enlarged to include economic significance of the invention as
well.
The test to ascertain
whether an invention involves an inventive step is expressed in Halsbury
Laws of England as: ‘was it for practical purposes obvious to the
skilled worker, in the field concerned, in the state of knowledge existing at
the date of the patent to be found in the literature then available to him,
that he should or would make the invention the subject of the claim concerned.’
In other words, the question to be answered in determining inventive step is ‘Would a non-inventive mind
have thought of the alleged invention?’ If the answer is ‘no’,
then the invention is non-obvious. If the patent claimed merely includes the
development of some existing trade, in the sense that it is a development as
would suggest itself to an ordinary person skilled in the art, it would fail
the test of non-obviousness.
In order to ascertain
whether an invention subscribes to the requirements of an ‘inventive step’,
a two pronged approach may be adopted. Firstly, ascertaining what was the state
of the art before the relevant date of the complete specification filed
pursuant to an application for a patent, and secondly having regard to the
state of the art, ascertaining whether the alleged inventive step would have
been obvious to a person skilled in the art.[9]
i.
State of Prior Art
For
an invention to be judged as novel, the disclosed information should not be
available in the ‘prior art’. This means that there should not be
any prior disclosure of any information contained in the application for patent
(anywhere in the public domain, either written or in any other form, or in any
language) before the date on which the application is first filed i.e. the
‘priority date’. Although the term ‘prior art’ has not been
defined under the Indian Patents Act, it shall be determined by the provisions
of section 13 read with the provisions of sections 29 to 34 of the Act.
The
following has been indicated as ‘prior art’ vide the Act[10]:
(a) anticipation
by publication before the date of the filing of the application in any of the
specification filed in pursuance of application for patent in India on or after
the 1st day of January 1912;
(b) anticipation
by publication made before the date of filing of the application in any of the
documents in any country;
(c) claim in any claim of any other complete
specification filed in India which is filed before the application but
published after said application;
(d) anticipation
having regard to the knowledge, oral or otherwise, available within any local
or indigenous community in India or elsewhere.
From the above it is
clear that in order for an invention to be anticipated by virtue of a patent,
the patent must have been granted in India alone.[11]
Thus, a patent granted in any other country would not constitute ‘prior art’
for the purposes of the Act.[12] However, if the patent is
anticipated by publication, it is irrelevant whether the publication
occurred in India or elsewhere.
An invention is not
considered ‘new’ if the claimed invention is publicly known or publicly
used in India before the priority date.[13]
As observed by the Supreme Court in Monsanto:
‘Publicly known does
not mean that it must be published in a document, although not found in a book,
it may form a part of the common knowledge among the public concerned. It also
does not mean that it should be widely used to the knowledge of the consumer.
It is sufficient if it is known to persons who are engaged in the pursuit of
knowledge of the patented product or process, either as men of science or men
of commerce or as consumers.’[14]
The Supreme Court in Bishwanath
Prasad’s case observed that prior public knowledge of the alleged invention
would disqualify the grant of a patent. Publications concerning the invention
whether through word of mouth or through books or media would, therefore
nullify any subsequent attempt to secure a patent.
ii.
Obviousness to a person skilled in the art:
A skilled person would be
a person who ‘has experience of the field in question and he may be one who
have available assistants who would carry out tests’.[15]
In order to pass the test of obviousness, the prior art referred above must be
of such nature as to inform the skilled person as to how the invention derived
from the prior art is to be performed. In other words, the person skilled in
the art must have the necessary information (through the prior art) to take the
inventive step in question.[16]
In determining whether an
invention involves an ‘inventive step’ and is ‘non-obvious’, the
supervening policy of patent law viz. to reward and encourage invention without
inhibiting improvements of existing technologies by others must be kept in
mind. Although no absolutely uniform test for determination of inventive step
can be formulated, certain broad criteria can be indicated, whether the
invention was publicly known, used or practiced before or at the date of the
patent? If the answer is positive, it shall negate inventive step.
A structured approach to
determine obviousness consisting of four steps was expounded in Windsurfing
International v Tabur Marine[17]:
- Identify the inventive concept in the suit
- Keep in mind a normally skilled, but unimaginative person having common general knowledge of the concerned art as at the priority date will be the date from which the objector to the patent would allege inventive step was obvious
- Through the spectacles of the aforesaid skilled person identify differences, if any, between the matter cited as being known or used and the alleged invention;
- Finally, without considering the alleged invention, consider whether the differences would see to the aforesaid skilled person such as leading obviously to the alleged invention or that a degree of invention would be necessary to obtain the invention.
In Bishwanth Prasad’s
case, the apex court reiterated the above test and suggested three alternative
conceptions of the same:
- Whether the alleged invention lies so much out of the track of what was known before as not natural to suggest itself to a person thinking on the subject, it must not be the obvious or natural suggestion of what was previously known;
- Had the document been placed in the hands of a competent draftsman, or engineer, (as distinguished from a mere artisan), endowed with the common general knowledge at the ‘priority date’, who was faced with the problem solved by the patentee, but without knowledge of the patented invention, would he have said, this gives me what I want?
- Was it for practical purposes obvious to a skilled worker n the field concerned, in the state of knowledge existing at the date of the patent, to find in literature then available to him; that he would or should make the invention the subject of the claim concerned.
3.
Utility:
It is pertinent to note
that utility was not a requirement for patentability under the Patents
and Designs Act, 1911. In Bishwanath Prasad’s case, the Supreme Court
recognised utility as one of the grounds on which a patent can be revoked. The
usefulness of an alleged invention depends not on whether by following the
directions in the complete specification all the results not necessary for
commercial success can be obtained, but on whether by such directions the
effects that the application/patentee professed to produce could be obtained.
The usefulness of the invention is to be judged, by the reference to the state
of things at the date of filing of the patent application, if the invention was
then useful, the fact that subsequent improvement have replaced the patented
invention render it obsolete and commercially of no value, does not invalidate
the patent.
Thus,
novelty, non-obviousness, industrial applicability and utility form the
essential requirements of patentability. These conditions have been universally
accepted as the essential prerequisites of patentability.
D. Patentability
of Computer Software:
It is a well-established proposition that computer
programs[18]
are copyrightable subject-matter,
just like any other literary work.[19]
Loading a program into computer memory, saving the program or running it
without authority may infringe copyright. Making an arrangement or altered
version of the program or converting it into or out of one computer language or
code into a different computer language or code is also an infringement.
Article 10 of the Trade Related Intellectual Property Rights Agreement (TRIPs)
expressly provides that computer programs, whether in source code or object
code shall be protected as literary works under the Berne Convention, 1971.
Despite protection afforded to computer software
through copyright law, it is submitted that copyright protection is not always ideal. Problems arise
when, in a particular invention, software and hardware co-exist. Would, in such
circumstances, copyright protection extend to the invention itself? That seems
unlikely, as copyrights being restricted to literary and artistic works cannot
be held to extend to machines. Hence,
some amount of protection is conferred
Section 3 of the Act contains a list of ‘what are
not inventions’.4 If the ‘invention’ for which the patent is
sought falls within the provisions of Section 3, no patent would be granted,
even if it otherwise satisfies the requirements of patentability outlined
above.
Section 3(k) of the Act prescribes:
‘mathematical
or business method or a computer program per se algorithms;’
Section 3 (k) of the Act thus clearly lays down that
computer programmes are not patentable.[20]
However, this was not always the case. The provisions concerning patentability
of software have been amended a number of times. The original unamended Act did
not exclude explicitly patents for computer related inventions, as computer
technology at that point of time was relatively unknown, but the definition of
the term ‘invention’6 itself excluded patents for computer
programmes.
A major amendment was introduced in Section 3 with
respect to the patentability of computer programs through the Patents
(Amendment) Ordinance on December 27, 2004. The Ordinance split the sub-section
3k into two- sub-section 3(k) and 3(ka). The excluded subject matters as
originally contained in Sub-section 3(k) were provided in the new Sub-section
3(ka). They included ‘a mathematical method or a business method or
algorithms’. The amended Section 3(k) read as follows:
‘(k) a computer programme per se other than its
technical application to industry or a combination with hardware.’
The key expressions contained in the above amendment
are ‘technical application to industry’ and ‘combination with hardware’. The
legislative intent behind these words was clear. If an invention is directed at
computer software having technical application to industry or coupled to
hardware – then it is patentable.7 The law as it stands now
however reverts to the original position of excluding computer program per
se from patentability.
From the above discussion it follows that if a patent
is sought only for the software tools[21]
i.e. a patent is sought only for a
computer program per se, then a patent would not be available for the invention, as it would be hit by the
provisions of Section 3 (k) elucidated above. However, if the patent is sought
for a combination of software and hardware, then it would not be a computer application per se, and hence might be patentable.[22]
As observed in Gales’ case:
‘Although those instructions are not patentable as
such, that is not the end of the matter. Computer instructions may represent,
for instance, a technical process. What is recorded in the instructions may be
the means for carrying out a technical process with the aid of a computer. In
such a case the process is not barred from patentability by reason of the use
of a computer as a medium by which it is carried out.’8
Analogy may also be drawn to the Diamond v.
Diehr9, where the US Supreme Court granted a patent for a
rubber curing process controlled by software as the patent was for the ‘rubber
curing process and not the computer software per se.’
From the above, it may be
concluded that in ascertaining the patentability of an invention, the invention
must be looked at a whole. A claim directed to a technical process which
process is carried out under the control of a program (whether by means of
hardware or software), cannot be regarded as relating to a computer program per se. An invention consisting of a
combination of hardware and software may be considered patentable, if it
satisfies the other requirements prescribed by the Act.
[2] Section 2(1) (m) of
the Act.
[3] Section 2(1) (j) of
the Act.
[7] Blakey & Co. v. Lathem & Co. [1889] 6 RPC 184 (CA)
[8] Fomento v Mentomore 1956 RPC 87
[9] Molnlycke A.B. v
Procter and Gamble 1994 RPC 49; Hoechst Celanese Corp. v B.P Chemicals 1997 FSR
547, 562.
[10] These provisions may
be found in Chapter IV of the Act containing provisions for publication and
examination of applications for patent and Chapter V of the Act dealing with
opposition to grant of a patent.
[11] S. 13(1); s.
25(1)(b)(i);s.25(1)(c);s.27(a);s.64(1)(a) of the Act
[12] A patent granted in
US would not be a bar to a patent in India for the same invention.
[13] S. 64(1)(e)
[14] Monsanto v Corommandal AIR 1986 SC 712, 717
[15] PLG Research v Ardon 1993 FSR 197, 207
[16] Hallen v Barbantia 1991 RPC 195, 212
[17] Windsurfing International v Tabur Marine 1985 RPC 59
[18] As is well
understood, the term "software" is 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 and the operating system programs are used to
manage the internal functions of the computer to facilitate use of application
program.
[19] Apple Computer v.
Franklin Computer, 714 F 2d 124
[20] In
addition it is also pertinent to note that Section 3(a) excludes ‘an
invention which is frivolous or which claims anything obvious contrary to well
established natural laws’ from patentability. As we have seen above, that
while ‘hacking’ per se is illegal (and therefore contrary to well established
natural laws) ‘ethical hacking‘is not. Hence it can be said that the invention
sought for which protection is sought in the instant case is not hit by the provisions
of section 3(a) elucidated above.
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