Question 1. Explain Software Patents by comparing Indian and US laws.

 A Software Patent is basically a property right which protects computer programs or any
performance of a computer programs such as Libraries, user interface, or algorithm.
 Though software patent do not have any true legal definitions.
 A software patent differs from a software copyright. Both protect the product, but a
copyright only covers the expression of an idea. For example, it might cover only the
exact written code of a software program. Software patents and software copyrights are
both a part of intellectual property law.
 According to US law, software (sometimes legally called computer implemented
processes) is a patentable item. However, like any other invention, the software must
meet certain criteria.
(i) There is an industrial or commercial way to use the invention. That means that the
software is used with a machine. This ensures that you’re not trying to patent a
"pure business method," such as a process that takes place in your head.
(ii) The invention is new, unique, and not obvious to anyone with average skills in
your industry.
(iii) The patent application is filled out in detail. All the information about the product
— known as the disclosure — meets the guidelines that the United States Patent
and Trademark Office (USPTO) set out.

 151 countries are part of the Berne Convention for the Protection of Literary and Artistic
Works. That just means that, in these countries, copyright protection is automatic. When
you create your software, it already has a measure of protection. This protection lasts for
the rest of your life and up to seven decades after your death.
 Patents, however, are much more complex and expensive. You must apply for a patent in
each country where you want protection. If you want international protection, you have to
submit a special patent application under the Patent Cooperation Treaty. Then each
region or country considers and grants the patent according to its own laws.
 Despite the complexity of the patent application process, many software developers still
choose to apply for patents because they offer more protection.

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  The "Machine or Transformation Test"

Consider the case Bilski v. Kappos1, which settled in 2010. Before that, the laws about
what types of items qualified for a patent were not as clear as they should have been. This
case set up the "machine or transformation test," which meant that the software — or
processes — had to be tied to a machine or turn one thing into another.

But it also means that your invention shouldn't simply be for use with a machine. "More
than insignificant extra-solution activity" should be involved. This means that the
software or process should play an important part in achieving a goal.

It is possible that processes that do not pass the "machine or transformation" test could
get a patent, but realistically, you should view passing this test as a requirement for your
invention.

 Here are a few reasons why software patents are such a highly debated topic:

Although US law states that abstract ideas cannot be protected by patents, this is not
the case everywhere. In places where ideas that have business value can be patented, the
definition of an "abstract idea" is not always clear.

In the worldwide marketplace, there is not a widely recognized difference between

patented and non-patented software. For example, in the European Union, software
can't receive patents. But there has been further discussion of the issue and an attempt to
standardize instructions across the EU.

Legal and technical programs can hinder innovation and patentability.

 Some Examples :
(i) Amazon One-Click, U.S. Patent No. 5,960,411

The One-Click software lets internet shoppers avoid the online shopping cart. If users have their
payment, billing, and shipping information saved, they can buy something with a single click.

(ii) Cadtrak XOR, U.S. Patent No. 4,197,590

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(2010) 561 US 593

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XOR deals with displaying images that have been stored in memory.

The USPTO has issued many patents dealing with many software subjects, including but not
limited to:

 Computer speed
 Computer security
 Word processing
 Spreadsheets
 Business management systems
 Data compression
 Graphics
 Operating systems.

Courts in the U.S. have also approved software patents recently. Patterns in what the courts
approve show what kinds of software are most likely to get a patent. These include:

 Networking technology
 User interface
 Machine control interface
 Encryption
 Databases
 Internet search.
 POSITION IN U.S. FOR PATENTING OF SOFTWARE
 U.S Patent and Trademark office (USPTO) grants patents for software’s. However, this
was not the case always. The patent office, in the year 1968 issued guidelines which
stated that a computer process could not be patented either as an apparatus or as a
process. As per these guidelines, patents could be granted only if an invention, in relation
to computer programs, would produce results in combination with computer and non-
obvious elements.
 In the case of Gottschalk v. Benson2, US Supreme Court held that an algorithm to convert
binary coded decimal numbers to true binary numbers was not a patentable invention

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 since algorithms are mathematics. The US Supreme Court equated mathematics to
abstract ideas and abstract ideas cannot be patented.
 In the case of Parker v. Flook3, US Supreme Court held that a method for updating the
alarm limit in a catalytic conversion process was a mere ‘post solution activity’ hence it
was not patentable.
 However, in the case of Diamond v. Diehr2, USPTO for the first time granted the petition
for grant on software. In the instant case, the invention was for a computer determined
and controlled heating of rubber for its best curing. The Supreme Court held that the
invention was not just a mathematical algorithm but also a process including steps to cure
rubber hence was a patentable invention. Even if the only feature added in the invention
was the calculation of timing, it was held to be patentable.
 POSITION IN INDIA FOR PATENTING OF SOFTWARE
 The Indian Patents Act does not mention that what software shall be patentable.
However, Section 3(k) of the Act provides for software which cannot be patented. It
provides under section 3(k) “a mathematical or business method or a computer program
per se or algorithms” cannot be patented. In 2004, attempts were made to include “section
3(k) a computer programme per se other than its technical application to industry or a
combination with hardware”

To provide a clearer understanding of the law regarding patenting of software, Indian Patent
Office issued draft guidelines for the examination of Computer Related Inventions (CRIs) in
June 2013. The guidelines provide the examiners of the Patent Office the method of analyzing
the merit of the patent application for patenting software. The claims for computer related
inventions are categorized as follows:

1. Method/process

2. Apparatus/system

3. Computer program product

4. Computer readable medium

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450 US 175

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In Vicom/Computer-related invention, it was held that an image processing method which
involved mathematical method for the handling of data representing an image to achieve the
technical effect of an enhanced quality of image was a patentable invention.

More recently in Electronic Navigation Research Institute vs. Controller General of Patents3, the
invention was a mathematical method for evaluating time series signals. Patent to the said
invention was denied on grounds that a mathematical method cannot be patented even if it
produces a technical effect as it is falls within the ambit of Section 3(k). Intellectual Appellate
Board (IPAB) relied on the judgment in Yahoo v Controller of Patents4, where it was held that
‘the inventive step’ is the subject matter of the application for patent of software, hence should
not be excluded in Section 3(k).

Question 2. Explain the process for registration of Patent in India.

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Original Appeal No. /26/2009/Pt./Del (2013)
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(2011)

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 The patent is an exclusive right granted by a Government to an individual who has invented any
new and useful device, software, products or the processes.  The provisions of Patent Act, 1970
protect the inventions which are carried out by the individual.

WHO CAN APPLY FOR PATENT

The following are the persons who can file the application for the registration of the patents in
the patent office either alone or jointly or by any other person:

 The one who himself invented any device or the process , the inventor

 The inventor’s assignee

 Any legal representative of the deceased inventor or his assignee.

As per the Patents Act, the term person is defined as the government.

FILING OF THE PATENT APPLICATION

The application for patent registration shall be filed before the Patent Office having its own
jurisdiction. The territorial jurisdiction for filing the patent applications before the patent office
are as under:
1. Where the applicant resides, or having the domicile or carries out the business.
2. The Address for the services being carried out in India by the applicant, in case where
there is a foreign applicant
3. For the registration purpose, Indian Patent Office regulates their functions from major
cities i.e. Kolkata, Delhi, Mumbai and Chennai.

REGISTRATION PROCESS
There are two options available to an individual seeking the registration of the patent, online
filing of the applications or in the patent office having the particular jurisdiction.

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1. Filing the application - The application for the grant of patent is filed before the patent
office comprising of the complete specifications, claims, abstract, and declaration by the inventor
along with the prescribed fee.
2. Publication – The publication of the application is done after the expiry of 18 months
from the filing date or the date of priority of the application having a title of the invention,
abstract, the application no. and the name of the applicant and the inventor.
To speed up the process of granting the patent application, the request for publication is put
before the patent office which can be made at any time after the filing of the application. The
application is published in one month from the date of publication. 

To speed up the process of granting the patent application, the request for publication is put
before the patent office which can be made at any time after the filing of the application. The
application is published in one month from the date of publication. 
1. Opposition (if any)
 (i)PreGrantOpposition -
A person can file a pre grant in writing upon the publication of the application but it should be
made before the grant of patent only. After filing the request for examination, the patent office
takes up the opposition. Various representations by the opponents and the response and their
evidences made by the applicant before the Patent Office. Upon the request for hearing the
parties before the patent office, the Controller shall proceed further either by rejecting the
application or by granting the patent. Upon the decision of the Controller, the applicant has an
option to go for the appeal against the decision.                                           
(ii.)Postgrantapplication
After the grant of patent, any interested party can file post grant opposition to the Controller.
After hearing the parties on the principle of natural justice of being heard, the Controller has the
authority to decide and notifies the decision to parties by giving the reason. The party has a
liberty to go for appeal against the decision of the Controller.

2. Request for the Examination-Either the applicant or the third party can put the request
for the examination by which the application is examined.

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3. First Examination Report-After the examining the application on the basis of novelty,
inventiveness or the industrial application, the examiner will issue and send the first examination
report (FER) along with the specifications.
4. Amendment of the objections by the applicant -By issuing the FER, the applicant has
given the opportunity to file a response and remove the objections which are raised by the
examiner.
5. Grant of Patent - After removing all the objection/defects which were raised by the
Examiner in the First Examination report, the Controller grants the application.
Renewal fees
There is no renewal fee for the first two years after the grant of the patent and from the third
year, the patent is renewed every year by paying the prescribed fee as per the Patent Act.