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IP Protection of Software in India – Patent or Copyright?

July 19, 2019

Software, in its most general sense, is a set of instructions or programs instructing a computer to do specific tasks.[1] With the beginning of digital era, every transaction or work has been made more simple and easy access to all the required information and platforms for making the communication. Computers have become one of the essences of life and almost every work which consumed human time has been reduced to minimum time pursuant to new software’s which helps the human by eradicating various routine tasks, improving efficiency and more effective interaction between the parties. Considering the important and effective nature of the product (i.e. software), it is now a question to determine the possible protections for the Software.

Software Copyright Protection

The programmer(s) invest time and effort in developing a software. As the main purpose of software is to make process easy, therefore it is important to value the creation and protect such software in the name of the owner of the work.

Section 2(ffc) of the Copyright Act 1957 which defines “computer programme” as “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”, read with section 2(o) of the Copyright Act 1957 which defines “literary works” includes computer programmes, tables and compilations including computer databases.”, protects software or computer programmes as “Software work” under “Literary works” as per the Copyright law of India.

Copyright protects the expression of the author and therefore the copyright in software will protect the creativity in the code functions that software performs in the computer. Where an application for software is filed with the copyright office, the applicant is also required to provide the copy of the source code and object code, which is the protected expression of the applicant.

Copyright law of India is prepared with the intention to promote creativity and generate more original works for overall development of society and the nation. However, at the same time, where a work is created by substantially copying the expression of others, then such works are considered to be infringement of others work and therefore non-copyrightable subject-matter. Even though
patent offers better protection in term of protecting the idea and economic exploitation of the work,
however, the standards to match the criteria is very high and examined very strictly.

Software protection under Indian law is fairly simple process, all you need is duly filed copyright application along with copies of work (source code and object code) in its programming language and machine-readable format (not written or text form). Even a new version of the software is protected with the above said simple procedure in India, whereas in few jurisdictions the difference of new version and old version must be clearly defined and mentioned with the Copyright Application. In India, as practice it is suggested that the source code and object code submitted must be the final compilation, i.e. complete coding, whereas, under rule 70(5) Copyright Rules 2013, the requirement is mentioned as “Every application for registration of a computer programme shall be accompanied by the source and object code.” Even though, there is no requirement of complete source and object code, the Copyright Office has at instances taken objection for incomplete source and object code. The regime looks similar as to the stand with United Kingdom Copyright Office, where the requirement is to provide with complete source code of the program.

A prevalent myth with respect to copyright is that the protection extended to copyright does not stop a third party from modifying the copyrighted work and further by basic modification, a third party will be able to claim a separate expression and copyright on the work. A copyright protection is extended to the expression of an idea, wherein the expression in its entirety is protected for the applicant, however, where a work is modified by third party with basic alterations/ adjustments, and without any creativity of its own, then the original copyright holder will be eligible to claim infringement on the grounds of substantial copying and absence of “flavour of minimum requirement of creativity”.[2] In view thereof, protection of software under the copyright laws of India, protects the expression of the idea, in form of coding, and is also protected against any substantial copying of the expression in an infringed work.

Software Patent Protection

Software or computer programmes are per se not protectable as Patentable subject matter. However, there can be certain exceptional situations wherein the computer programmes or software may qualify as patentable. In order to claim patent for a software work, one must show the following important determining factors:[3]

  1. the invention must consist of patentable subject matter;
  2. the invention must be capable of industrial application;
  3. it must be new (novel);
  4. it must involve an inventive step (be non-obvious); and
  5. the disclosure of the invention in the patent application must meet certain formal and substantive standards

Section 2(1)(l) of the Patents Act 1970, states that “’new invention’ means 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.” However, section 3(k) of the Patents Act 1970 states that “a mathematical or business method or a computer programme per se or algorithms” are not inventions and therefore not patentable. The intention of legislature attached with the use of words “per se” was elaborated vide Report of the Joint Committee (Presented to the Rajya Sabha on the 19th December, 2001) stating that “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.
[4]
Irrespective of the explanation provided by the Parliament, it can still be said that the interpretation of section 3(k) of the Patents Act 1970, is not to consider all software for patent protection, however, the genuine cases where the software stands tall on all criteria for patentability, then such software must be granted patent. The strict check on software patent application, is necessary as the patent protection protects the idea of the patent and therefore, it may lead to restricting the creativity with the patented idea. Therefore, if software can be protected under the patents regime if it has a “technical effect”. It is pertinent to note that the Guidelines for Examination of Computer related Inventions (CRIs) mentions the following important aspects for examination of CRI:[5]

  1. Novelty: It is the prime requirement for determining patentability of any invention. Therefore, any subject matter, description or information available / disclosed before the date of filing / date of priority will not be considered as novel and therefore non-patentable.
    [6]
  2. Inventive Step: The inventive step is identified under the following parameters:[7]
    1. Identifying inventive concept in the patent;
    2. Identifying common general knowledge in the state of art on the date of priority;
    3. Identifying difference in the invention claimed and cited inventions; AND
    4. Deciding whether the difference constitutes steps which would require invention or is obvious with the existing state of art.
  3. Industrial Applicability: Any invention which seeks patent, must have an industrial application, i.e. which can be made or used in industry.
    [8]

As per the manual, it is mandated that the since patent is granted in all fields of technology, therefore it is very important to ascertain whether method/ process relates to technological field., i.e. whether the inventive step claimed has any technical advancement over the prior art. Therefore, in order to bring a computer related inventions or software outside the ambit of term “per se” in section 3(k), the examiner scrutinizes the interaction of software and the hardware (where hardware is more than a general-purpose machine). Therefore, in cases where the devices are claimed in combination with the novel or known computer programmes to make their functionality definitive, the claims to these devices may be considered patentable, if the invention has passed the triple test of novelty, inventive step and industrial applicability.
[9]
Further, since Patents Act 1970 includes computer programmes under the list of non-patentable subject matter, therefore in order to make the software patentable then the following parameters are to be ensured:
[10]

  1. INVENTION: Invention is related to computer where software is essential and gives a technical effect; AND
  2. SOMETHING MORE: That the invention is more than mere technical effect by software, i.e. there is a tangible element which interacts with the software and thus making the set of software and tangible element a software.

ANALYSIS
Software or computer programmes are mainly copyright subject matter, however, if the conditions for patentability are satisfied then the computer programme may be protected as Patents. Even though, Patent gives better protection over the use of the work, however, copyright is the first right of the software, which is automatic once the work is created. Unless, the owner is able to satisfy the conditions of patent, the software so created (if original creation) will be protected under the Copyright laws.

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[1]Technopedia, available at
https://www.techopedia.com/definition/4356/software

[2]Eastern Book Company & Ors vs D.B. Modak & Anr, (2008) 1 SCC 1

[3]Patenting Software, WIPO, available at
https://www.wipo.int/sme/en/documents/software_patents_fulltext.html

[4]Report of the Joint Committee (Presented to the Rajya Sabha on the 19th December, 2001), available at

http://www.ipindia.nic.in/writereaddata/Portal/Images/Patents-Act-REPORT-OF-THE-JOINT-COMMITTEE-19-Dec-2001.pdf

[5]CGPDTM, Guidelines for Examination of Computer related Inventions (CRIs) (2013), available at

http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_36_1_2-draft-Guidelines-cris-28june2013.pdf;  CGPDTM, Guidelines for Examination of Computer related Inventions (CRIs) (2017), available at

http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/Revised__Guidelines_for_Examination_of_Computer-related_Inventions_CRI__.pdf

[6]Id.

[7]Id.

[8]Id.

[9]Id.

[10]Gene Quinn, Defining Computer Related Inventions in a post-Alice World, available at https://www.ipwatchdog.com/2017/04/15/defining-computer-related-inventions-2/id=82101/;

Gaurav Arora, Need ‘SoftPatents’ for Software Inventions, available at
http://www.mondaq.com/india/x/587718/Patent/Need+SoftPatents+for+Software+Inventions

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