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Protecting software programmes vis-à-vis patentability of software
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Protecting software programmes vis-a`-vis patentability of software5 Harshita Kumar, Deepesh Kumar RML National Law University, Lucknow, India
abstract Keywords:
A patent is an official document that confers proprietorship of an invention on the recip-
Software programs
ient. A grant of a patent is preceded by examination of applications by the patenting
Patent
authority but the final responsibility for validating or invalidating a patent lies with the
Patentability
courts under challenge. The fundamental principle behind patents is that the governmental authority awards exclusive control over an invention for a fixed number of years, to the individual who first discloses the invention within its territory. In most systems a patent is granted to whichever applicant is first to submit a detailed description of the invention, provided the applicant can satisfy the patent authority and the courts through litigation regarding certain conditions laid down by patent law. In instances where strong public policies outweigh the policies behind granting patent exclusivity, the scope of a patent may be limited. ª 2011 Harshita Kumar and Deepesh Kumar. Published by Elsevier Ltd. All rights reserved.
1.
Introduction
A patent is an intellectual property right relating to inventions and is the grant of exclusive right, for limited period, provided by the Government to the patentee, in exchange of full disclosure of his invention, for excluding others, from making, using, selling, importing the patented product or process producing that product for those purposes. The purpose of this system is to encourage inventions by promoting their protection and utilization so as to contribute to the development of industries, which in turn, contributes to the promotion of technological innovation and to the transfer and dissemination of technology. Under the system, patents ensure property rights (legal title) for the invention for which patent have been granted, which may be extremely valuable to an individual or a company. One should make the fullest possible use of the Patent system and the benefits it provides. Patent right is territorial in nature and a patent obtained in 5
one country is not, as such, enforceable in another. The inventors/their assignees are required to file separate patent applications in different countries for obtaining the patent in those countries.1 Patents are granted in regard to inventions arising from new technology. The rights they ascribe to the inventor include the right to exclude others from utilizing the patented invention for a specified amount of time, which is usually 20 years. In return for obtaining this grant, an inventor must describe the invention in detail to give notice to the public to enable one of ordinary skill in the art to which the invention pertains to make and use the invention.
2.
Efficiency of TRIPS vis-a`-vis Article 27
Industrial countries in the past had their own patent laws and offices. Those seeking protection in a specific country had to
This paper derives from a conference paper presented at the First International Conference on Computing Business Applications and Legal Issues (ICCBALI 2011) Institute of Management Technology Ghaziabad, India and Winona State University, USA, March 3e4 2011. 1 General information for Filing Patent Application in India, published by Office of the Controller General of Patents, Designs and Trade Marks. 0267-3649/$ e see front matter ª 2011 Harshita Kumar and Deepesh Kumar. Published by Elsevier Ltd. All rights reserved. doi:10.1016/j.clsr.2011.07.011
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apply for a national patent and obey local laws. With increasing globalization, international agreements were made and organizations founded to reconcile regional differences. The 1883 Paris Convention was based on the principle of reciprocal national treatment and therefore dealt more with international comity than the unification of patent laws. The1970 Patent Cooperation Treaty finally implemented international one-stop patents. Both treaties are administered by the WIPO (world intellectual property organization). The new trend is to include property matters in trade agreements. In 1995, the WTO passed the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) to reconcile the world’s patent laws. The agreement imposes uniform minimal standards modeled after the laws of industrialized nations and is part of the General Agreements of Tariffs and Trade (GATT), the purpose of which was to eliminate trade barriers. Under TRIPS, signatory countries are required to make patents available for “any inventions in all fields of technology”.2 Further they cannot discriminate against technologies (except, in some respects, in the field of biotech).TRIPS is subject to interpretation. There is no any reason to doubt that having a strong patent regime will help in the promotion of industrial and scientific development but the real point is whether it is conducive to the winewin policy as adopted by the new globalization and economic order. Article 27 of the TRIPS Agreement in itself has provided some conditions to exclude patentability of products especially for reasons of public health, ordre public and public morality. As the least developed countries, have no legal framework and technical capacity to implement article 27 of the TRIPS Agreement, they can exclude some matters from patentability which can be a barrier to their technological and economic development. But such exclusion in their respective
2
Article 27
(1) Subject to the provisions of paragraphs 2 and 3 patents shall be available for any inventions, whether products or processes, in all field of technology, provided that they are new, involve an inventive step and are capable of industrial application. Subject to paragraph 4 of article 65,para 8 of article 70 and para 3 of this article, patents shall be available and patent rights are enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced. (2) Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect or republic or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law. (3) Members may also exclude from patentability: (a) diagnostic, therapeutic and surgical methods for treatment of humans and animals: (b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the pro-tection of plant varieties either by patents or by an effective sui generis system or by any combination thereof.
jurisdiction does not protect their interest at all as exclusion from patentability of certain subject matter does not exclude the same from patentability in another region or country. The TRIPS treaty has no time limitation. It is valid as long as the WTO as a whole cannot agree to change it. The organization of WTO is far removed from democratic participation, and many WTO members are dictatorial states. If any country wants to opt out of TRIPS, it will have to leave WTO, thereby risking a collapse of its exporting industries. The Treaty was negotiated in backrooms between ministerial officials and, for most of the world’s languages, translations do not even exist. All these considerations make it imperative to interpret the TRIPS Treaty with the greatest care and to make extensive use of the flexibility which it allows, so as to achieve a fair balance of rights and obligations under the overall objective of Free Trade which the Treaty serves. The drafters were aware of these problems; therefore, they incorporated provisions such as Articles 7 and 8 in the TRIPS Agreement.
3. The varying treatment of patentable subject matter Economics are the driving force behind the filing of patent applications. Software is now the main component for determining the success of a particular commercial application of computer technology. They now focus not so much on selling their proprietary hardware butmore on providing integrated computing solutions to business problems, of which the software component is a crucial part from the customer’s point of view. Across the globe, computer programs or software have been given protection, i.e. a legal cloak either in the form of copyright or patents, etc.3 However, with advancement of time and technology, talk about patent protection of software has gained momentum. Software patents are one of the most contentious issues in intellectual property rights worldwide. The growing economic significance of computers and computer programmes gives software patents this controversial status. The last decade has seen a decisive shift in economic and commercial focus away from the hardware component towards the software element. Software patents are used by firms and other enterprises to gain a competitive advantage vis-a`-vis competitors in that they represent a government sanctioned monopoly permitting the patent 3 Methods of protecting intellectual property in computer programs.
Copyright protects code from copying and public dissemination. However, the protection offered is for the particular arrangement of data, not for the ideas represented by that data. Database right protects databases whether created by software or created by human beings, for example, data tables which might be used by a computer program to do its job, however, this offers only limited protection to the constituent parts of the program itself. Confidentiality protects the source code itself from dissemination to anyone outside the owner/producer of it. Patents, however, protect the concepts and methods associated with the “Industrial Application” of computer programs.
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holder to exclude a competitor lucrative market. To a certain extent, software patents act as the fulcrum in the playing field. The software patent does not have a universally accepted definition. One definition as suggested by the Foundation of a Free Information Infrastructure is that a software patent is a “patent on any performance of a computer realized by means of a computer programme. Software has become patentable in recent years in most jurisdictions, although the same is subjected to certain restrictions in some countries. The number of software patents has risen rapidly. The patentability of software based “business methods” has further fuelled the debate, especially as concerns the possibility that low quality patents might negate the fledgling electronic commerce sector. Important issues concerning software patents include: * where the boundary between patentable and non-patentable software should lie; * whether the inventive step and non-obviousness requirement is applied too loosely to software; and * whether patents covering software discourage, rather than encourage invention. Having presented a brief introductory note on software patents, this paper now goes on to discuss the varied treatment accorded to this subject matter within a number of selected jurisdictions.
4.
The UK position
Section1(2) of the Patent Act, 1977 provides for a nonexhaustive list of areas that will not be regarded as an invention: (2) It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of: (a) discovery, scientific theory or mathematical method; (b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever; (c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; (d) the presentation of information. but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such. Clause(c) of this provision puts a bar on a program for a computer. However, in this adage of information, technology, power, etc., the UK judiciary has started to provide a cartilage-like interpretation to its statutory provision. The Court in Aerotel v. Telco and Macrossan’s application4approved a four step test proposed by the UK patent office, for the purpose of granting software patents: 4
[2006] EWCA Civ 1371.
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(a) properly construe the claim, which analyses the scope of the potential monopoly before moving on to deciding whether the area is excluded; (b) identify the actual contribution. This step looks at whether the patent application adds to human knowledge. The court outlined that it is the substance rather than the form of the claim that is important. (c) ask whether it falls solely within the excluded subject matter, this deals with the Article52(3)question, the wording of the step indicates that if it falls partially within one or more of the excluded areas it will pass the third step. (d) check whether the actual or alleged contribution is actually technical in nature. In the most recent judgment5 by the UK Court, Kitchin, J. observed that the current position as regards computer programme claims in the UK is that the same will be granted by the UK patent office, with the aforementioned case’s criterion of the four step test being used.
5.
Position in the USA
In the US, the Constitution and the Patent Statutes define the boundaries and scope of patent protection. Through the 1970s, software was considered equivalent to a mathematical algorithm or laws ofnature,6 and thus was not patentable.7A Supreme Court ruling in 1981 drastically changed software patenting. While it did not fully establish the software patenting standards in place today, the Diamond v. Diehr decision set the ball rolling for later precedent-setting decisions that further extended patents to software. The applicants in Diehr claimed a computer-aided process for “molding raw, uncured synthetic rubber into cured precision products. The Court proposed that “transformation and reduction of an article to a different state or thing is the clue to patentability of a process claim that does not include particular machines”, the Court noted that it was beyond dispute that the claimed process transformed an article, uncured synthetic rubber, into a different state or thing. The Court’s conclusion that applicants claimed an eligible process was “not altered by the fact that in several steps of the process a mathematical equation and a programmed digital computer were used.” The Court further observed that in the instant case, the applicants did “not seek to patent a mathematical formula. 5
Astron Clinica and Ors v. The Comptroller General of Patents, Designs and Trademarks. 6 Apache and Send mail are two very successful open-source programmes, in the sense that they are the most often used programs in their categories. However, few non-IT people have heard of them. See Andrew Leonard, Apache’s Free Software Warriors, SALONMAG. (Nov. 1997), available at: http://archive.salon.com. com/21st/feature/1997/11/cov_20feature.html. 7 The Patent Act of 1952 defines the following as patentable inventions: “any new and useful process, machine, manufacture, or composition of matters, or any new and useful improvement thereof.” 35 U.S.C. Section 101 (2004). Courts have long held that mathematical formulae, algorithms, and laws of nature are not patentable subject matter under the Patent Act.
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instead they sought patent protection for a process of curing synthetic rubber.” According to Rehnquist, J, who wrote for the majority, “the claims must be considered as a whole.” The ruling established that the algorithm contained in the patentee’s software was not protected as an abstract idea, but rather in its application in the rubber curing process. The author infers that in the USA, the USPTO does not require patentable inventions to be of a “technical” nature (unlike the Indian and European scenario), but that they just fulfill a “usefulness” criterion. The decision of Diehr was voiced in 1994 by the Court of Appeals for the Federal Cicuit (CAFC)in In re Alappat.8 The CAFC observed that “such (alleged) programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” In1998, the CAFC made another landmark ruling striking down the “business method” exception. In State Street v. Signature Financial, the CAFC rejected the non-statutory claim based on “unpatentable” abstract ideas, but also went further in holding the “business method exception” itself to be invalid. Thus it can be inferred that, though the door to allow entry of software patents was unlocked in 1981 by the ruling in Diehr, the doors were opened in 1994and subsequently again in 1998 in the ruling by CAFC.
6.
The position in Europe
In most European countries the traditional view with regard to patents is that patents protect technical inventions and technical progress. According to the EPC, an invention is patentable, if: 1. 2. 3. 4.
it is not excluded by Article 52(2) and (3) of EPC9 it is novel (article 54) it involves an inventive step, i.e., non-obvious (article 56) it is capable of industrial application (article57)
However, although programs for a computer are “as such” explicitly excluded from patentability, a method may still 8
33F.3d 1526, 1537 (Fed. Cir. 1994). Art. 52(2): “the following in particular shall not be regarded as inventions within the meaning of paragraph 1: 9
(a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business and programmes for computers; and (d) presentations of information”.
Art. 52 (3): “the provisions of paragraph 2 shall exclude patentability of the subject matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject matter or activities as such.”
bepatentable even if the claimed subject matter defines or involves a business method or a computer program. The EPO first held in 1987in the Vicom case,10 that the fact that an invention uses a computer programme will not, in itself, exclude it from patentability. In that case, claims to a mathematical method for image processing were allowed. The EPO concluded that the method claimed made a contribution to the art in a field not excluded from patentability under Article 52 of the EPC. The process of enhancing images gave the claims a technical character. In1998, the EPO held in the IBM case11 that patent protection for a computer programme was available if such programme had a technical effect beyond the way it operates the computer. In the Queuing systemcase12,the EPO had found that a patent application for a system involving software for determining the queuing system for serving customers at plural service points was patentable. The EPO concluded that the problem the invention was solving was the means of interaction between the components of the systems (the terminals). This was a technical problem, and the invention had a technical character. The present position in Europe as regards software protection is that, despite the new guidelines, it is still not completely clear what types of computer programs are patentable or what the same should do to give rise to a new technical effect. Much may depend upon the way the patent is drafted. A patent emphasizing “hardware” rather than software features is more likely to be granted. However, the final judgment is still left with the national courts, which are not bound by the decisions of the European or national patent offices and could come to different decisions. So far, this paper has discussed the legislative patent framework of various developed nations from the West. There are two major economic giants from the East, namely China and India, which have achieved rewards themselves in the race to appear on the ‘roadmap’ of the international financial market. Therefore, it is prudent to discuss the Chinese and Indian stand on the issue of protection of computer programmes or software.
10 http://legal.european-patent-offic.org/dg3/biblio/t840208ep1. htm; last visited on 11 December 2009. The patent application in this case was for a method/apparatus for digitally processing images in the form of a 2-D array to produce an enhanced image on the screen. Here the examining division refused to grant the patent because it was directed to a computer programas such and/or a mathematical method. The EPO Technical Board of Appeal disagreed and distinguished situations where a process was carried out on numbers and produced a result solely in numerical form (an abstract mathematical method-producing no direct technical result) with other cases such as this where the method was used in a “technical process”. 11 http://eupat.ffii.org/papri/epo-t971173/index.en.htm; last visited on 11 December 2009. In this case a claim related to a method of displaying information (onscreen) by displaying a first window, detecting a second window displayed in the first window and moving obscured information (in the first window) to where it was not obscured. There was also claim to a program to make a computer execute that operation. Was this a claim to program “as such”? 12 http://www.buildingipvalue.com/05XB/064067.htm.
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7.
The position in China
The rapid development of the information industry and the popular application of networks have made computer software (“software”) a core part of the network information era. Since software is so important, protecting it is essential. Currently, the international prevailing practice in software protection is to place protection standards within the purview of copyright laws. Patent and trade secret regulations are also used to protect software. The exact definition of software can fluctuate nation to nation, as each nation adjusts the definition provided by the World Intellectual Property Organization (“WIPO”)13 to address their respective situations. In China, Article II of the Order of the State Council of the People’s Republic of China defines “computer software” as “computer programs and the relevant documentation thereof.”14
8.
Copyright protection for software
Copyright protection is the most widely used legal protection model for software internationally. As a type of “works”, copyright law offers a broad scope of protection to software. Because copyright law standards to qualify as works are not high, only formal innovation is needed. Copyright Law of the People’s Republic of China explicitly covers software.15 In 1991, China promulgated the regulations specific to software 13 According to WIPO Model provisions on the protection of computer software, Geneva 1978,“computer software” refers to: computer program, program description and program user instruction. Computer program means“. a set of instructions, expressed in woods, codes, schemes or in any other form, which is capable, when incorporated in a machine readable medium of causing a machine having information processing capabilities to indicate, perform or achieve a particular function, task or result.” “Program description” means a complete procedural presentation in verbal, schematic or other form, insufficient detail to determine a set of instructions, constituting a corresponding computer program; “user instruction” means any auxiliary materials, other than a computer program or a program description, created for aiding the understanding or application of a computer program. 14 Regulations on the protection of Computer Software. Article 3 provides for definitions for the following terms:
1. COMPUTER PROGRAM: refers to the coded instructional sequences e orthose symbolic instructional sequences or numeric language sequences which can be automatically converted into coded instructional sequences e which are for the purpose of obtaining a certain result and which are operated on information processing equipment such as computers. The source code program of apiece of computer software and its object code program should be regarded as one work. 2. DOCUMENTATION: refers to written materials and diagrams which are used to describe the contents, organization, design, functions and specifications, development circumstances, testing results and method of use of the program, for example program design explanation, flow charts, user manuals, etc. 15 Article3: for the purposes of this law, the term “works” include works of literature, art, natural science, social science, engineering technology and the like which are expressed in the following forms: (8) computer software.
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protection e Regulations on the Protection of Computer Software (“Regulations”). According to the Regulations, software that is independently developed and that is in a material form, such as magnetic media or CD, will enjoy copyright protection.
9.
Patent protection in China
Software protection is within the purview of the Patent Law of China. Inventions composed of software programs are significantly different from traditional “works” because they consist of a large amount of creative work. Therefore, the software developer’s ideas are the most valuable and are most in need of protection. If technicians obtained the developer’s design ideas, they can easily design a program e via reverse engineering16, reverse coding, or reverse assembly e that shares the same or similar function. However, technical ideas cannot be protected by traditional copyright law. Under copyright law, only the expressive forms of works are within the purview of protection; ideas and “function” are excluded from the purview. For the programs depicting technical ideas, especially those inventions involving computer programs, patent law protection usually adopts the functional characteristics to limit their scope of protection. Patent protection is characterized by its exclusive and monopolized rights. Once patent rights are granted to computer software, any similar inventions, even those developed independently by others and falling into the scope of patent protection, will constitute an infringement.
10.
The position in India
Patenting systems in India are governed by the Patents Act, 1970, which was enacted by the legislature in lieu to fulfill its obligations as a signatory to the TRIPS Agreement. On 1 January 2005 the new Patents Amendment Ordinance, 2004 was promulgated. The Ordinances ought to bring the issue of embedded software within the regime of patentable subject matter. Thus, hitherto, where the Patent Act prohibited patenting of computer software per se, the Ordinance qualified this by stating that “a computer programme per se” is not patentable “other than its technical application to industry or a combination with hardware”. 16 Reverse engineering is the process of discovering of technological principles of a device, objector system through analysis of its structure, function and operation. Reverse engineering has its origins in the analysis of hardware for commercial or military advantage. The term reverse engineering as applied to software means different things to different people. “Reverse engineering is the process of analyzing a subject system to create representations of the system at a higher level of abstraction”, Chikofsky, EJ; Cross, JH, “Reverse Engineering and Design Recovery: A Taxonomy in IEEE Software”, pp. 13e17, IEEE Computer Society, January, 1992 at http://www.computer.org/portal/web/guest/ home.The term reverse engineering can also be seen as “going backwards through the development cycle”, Warden, R, “Software Reuse and Reverse Engineering in Practice”, 1992, p. 283, Pub. Chapman and Hall, London, England, 1992.
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It is suggested that the requirements laid down in the Ordinance designed to prevent future litigation or claims of infringements being raised, remains a distinct probability even after a patent has been granted. The Ordinance ensures adequate safeguards against misuse of patent rights and vests enough power with the Government to intervene and ensure that patented inventions are available for the public at a reasonably affordable price. Further, Nasscom, the Indian software industry body, has managed to incorporate provisions that will allow patent protection for software in combination with or embedded in hardware, such as in computers or cell phones and a variety of other gadgets. Similar to EU nations, the gaining of patent protection for software depends more on the drafting skills of the patent engineering India too. If the claims are drafted in such a way as to reflect that the invention is not software perse, it may qualify for patent protection. So far the Indian Patent Office as well as the Indian judiciary has not had the opportunity to examine the legality of grant of patents to inventions involving software. However, it is true that not only the Indian legal fraternity but also software multi-nationals across the world (which are slowly shifting their base to India) are keeping a close watch on this question. The best example would be the case of Microsoft, whose tally of 306 patent applications in India in 2004 was a fivefold increase from the 67 patent applications filed in 2003. At this juncture it is appropriate to observe why software or computer program perse have not been accorded patent protection, but instead attract rights that reside within copyright. It is taken as a given and established fact that patents are granted only when the claim is to an invention. Computer programmes perse are not so held because they merely describe an abstract idea. Although, computer programmes are not patentable per se, a claim to a manner of manufacture, which results in a tangible product, which requires the application of an algorithm or a particular computer programme, may indeed be patentable. The Chinese system is akin to that of India’s in this respect. Though the Chinese legislation does not use the term per se, its legal the provisions clearly state that software that is “independently developed” and in a material form, such as CD, etc., will enjoy copyright protection. Analogies between the legal systems of Asia’s two economic giants that elucidate the aforementioned requirement can be found in the Indian system. According to Indian law, software per se (i.e., software by itself) shall be a subject matter of copyright. However, as far as patent protection to software is concerned, the Chinese patent system is of the view that inventions comprising software or computer programs are clearly distinct from traditional “works”. The reason for this is that the former involves a large amount of creative work. However, the ideas implicit in the development of software are very valuable and, therefore, are in need of protection. Since ideas are not protected under copyright law, such technical ideas are given patent protection. Patent examination (“Guidelines”) promulgated by the State Intellectual Property Office (“SIPO”), stipulate general principles and specific instances for software protection, saying in effect that software when embedded in an invention can receive patent protection only and only when the same has some technical application.
As regards patent protection of software it is also noted that the Amendment of 2005 to the Indian Patents Act 1970, incorporated the provision that in order to be patentable software should be capable of being embedded in hardware and the same should have a technical application. Therefore, from the above analysis of Chinese and Indian systems, it is clear that both legal systems are at one with one another so far as protection of software or computer programs is concerned.
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Critical analysis of the Indian system
It is submitted that India has adopted the more conservative approach, i.e., the focus is not on software or computer programs per se but on whether the software or computer program is “sufficiently technical in nature”. On the other hand, in the USA, the USPTO does not require this but emphasizes that it should fulfill a “usefulness” criterion. This is the reason why in the USA, it has led to patenting of even abstract rules and methods for performing human activities, known as “business methods”. Here, it would be relevant to note that the USA form of issuing patents for software has resulted in a number of trivial patents being granted. In a report back in 2002 by the Washington based National Science Foundation, it was found that there had been an acceleration in the grant of patents in recent times. It is submitted that the US Supreme Court should restrict the patentability of software-related patents, in particular that of business methods and thereby narrow its scope. Under the Indian scenario, computer programs per se are excluded from the ambit of patent protection but are granted only copyright protection.17 A consequence of this is that software developers tend to go to the USA and seek patent protection for the same. The Indian system for this is being criticized; however, the author opines that the intent of the Indian legislature behind such provisions was correct and was in support of the healthy growth of the industry. According to the framers of Indian intellectual property rights laws, software is a set of instructions in a language that computers understand. These instructions are nothing more than expression. It is known that the computer understands this expression in a different language, i.e., objectcode18 and that the same expression is readable by humans in higher level language, i.e., source code. It is noted then that the set of instructions fed into a computer takes a different form from that of source code and that expression is given protection under copyright law. The Indian legislature regards software as nothing more than expression, therefore does not think it prudent to grant patent protection to computer software in so far as creating a monopoly over such ‘expression’ for 20 years. It is submitted that the fact that the Indian judiciary and the Indian Patent Office have not yet been confronted by any 17 Section 2(ffb) defines “computer” as “any electronic or similar device having information processing capabilities.” Section 2 (ffc) defines “computer program” 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.” 18 Object code form is that form in which a computer runs it.
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litigation is evidence of the fact that Indian law regarding protection of software is not infected with fallacies. It may be argued that India is not abiding with the provisions of TRIPS but the author defends the Indian standby noting that TRIPS accords a degree of flexibility (discretion) to all the member nations and India is simply availing itself of this benefit. India has sui generis legislation for the protection of copyright and, within its umbrella, covers the issue of protection of computer programs per se. Moreover, the socioeconomic framework of Indian society is quite distinct from that of other developed societies. The provisions of TRIPS, including the effectiveness obligation in Article 27, should be read in the light of the agreement’s objectives. The same should be read alongside Articles7and 8 of TRIPS.19 It should be noted that the objective of TRIPS is to balance members’ intellectual property protection obligations with their right to promote social and economic welfare. This means that TRIPS not only desires member nations to abide by their intellectual property obligations, but that simultaneously they should also cater for their respective socioeconomic needs. An objective-based interpretation of TRIPS necessitates adherence to the Article 7 requirement that intellectual property mechanisms balancing members’ rights and obligations be read alongside the Article 8principles, which vest members with the right to prioritize their national public interests. India, therefore, is simply following the principles set forth by the TRIPS Agreement. However, the Government of India, in order to meet the December 31 deadline for complying with its commitment to the World Trade Organization (WTO) on patent law, promulgated the Ordinance known as The Patents (Amendment) Ordinance, 2004.20 Apartfrom the many other introductions
19 Article7: “contribution to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge.”Article8: “members may, in formulating or amending their laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socioeconomic and technological development, provided that such measures are consistent with the provisions of this agreement.” 20 The earlier amendments had, inter alia, provided for the modalities for a ten-year transition facility (which India had negotiated at the time of its accession to the WTO), commencing from the 1st January 1995. As a consequence, the law was required to be amended further in respect of India’s obligations under the TRIPS Agreement, due from 1st January 2005. Given the importance of the issues, the Government undertook broad- based and extensive consultations involving different interest groups on aspects critical to the changes which were necessary in the Patents Act, 1970.These included country-wide interactive sessions with various interest groups, including scientists, academicians, economists, representatives of various industry sectors (such as pharmaceutical, biotech and software), chambers of commerce, private and public sector units, journalists, non- governmental organizations, representatives of State Governments, lawyers and attorneys and other interest groups and extensive inter-Ministerial consultations. While considering this amendment to the Act, efforts have been made not only to fulfill India’s final obligations under the TRIPS Agreement, but also to simplify and rationalize the procedure governing grant of patents so as to make the system more efficient and user-friendly.
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and amendments to existing patent law, the new law states that patent protection shall be given for software in combination with or embedded in hardware such as mobile phones, TVs and computers. This means that software per se will only be given copyright protection if the alleged software or computer program is in combination with hardware and shows technical output. Only then shall the same be given patent protection and any illegal act amount to infringement of the inventor’s patent rights. The principle underlying this provision is that computer programs per se being merely a set of instructions (expressions) are not patentable but only copyrightable as the latter protects expression. However, by the virtue of the new patents law, when the alleged computer program is embedded in hardware to serve a technical function then the same dons the garb of functional value and this is what is protected by patents law. When this is combined with hardware the alleged claim does not remain ‘perse’. It is submitted that on combining computers software (excluded category) with hardware (not excluded category); the same is also covered under the ambit of the non-excluded category and therefore is accorded adequate patent protection. India has a unique opportunity to make its mark in the silicon design space because of its strong semi-conductor engineering capacity and its obvious competence in software design and services. With India’s traditional strength in software development, as well as its growing expertise in chip design, several top semi-conductor and systems companies are setting up their R and D centres in India with emphasis on embedded software. Apart from the fact that most international semi-conductor companies have some sort of presence in India, Indian companies, themselves, are now engaged in the business, either through the provision of required services or directly through the development of embedded software. This amendment will without doubt provide a huge incentive for India’s information technology industry, such as the semi-conductor industry, to innovate, create and develop embedded software. It can be assured of the same level of protection in India as may be enjoyed elsewhere in the world. Therefore, the Ordinance has definitely had its use and established its relevance in today’s India, particularly within the growing domestic semi-conductor industry. This, along with judicial regulation will surely ensure a judicious use of patent protection while allowing the industry to grow through innovation and invention, thereby mitigating the risk of trivial patents stifling real progress. This is the reason why a patent should always be treated as a “double edged sword” to be wielded with caution and sensitivity.
12.
Conclusion
In conclusion there are various approaches to protect patentable subject matter. All of these approaches have their own unique qualities; however, not all patentable subject matter is fit to be given protection under all the legal approaches. The object of this paper has been to understand the need for protecting software or computer programs, and to compare and analyze the different approaches of various countries towards protecting their software/computer programs.
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On analyzing and examining the approaches of various legal systems, namely the UK, USA, EU, India, China, the author can observe that, excepting the USA, all of these legal systems have controls over the grant of patent protection to software or computer program. For instance, the UK will only grant patent rights when the “alleged” software shows that the same has a “technical application”. The present position in Europe as regards software protection is that despite the new guidelines it is still not completely clear what types of computer programs are patentable or what the same must do to satisfy the new technical effect requirement. Much may depend upon the way the patent is drafted. A patent emphasizing “hardware” rather than software features is more likely to be granted. India and China do not grant patent protection of computer programs perse or if the same has been developed “independently”. Instead, both Asian legal systems afford copyright protection for computer programs perse or computer program developed independently. They grant patent protection only and only when the “alleged” software can be embedded in hardware (India) or be presented in a material form, e.g. a CD (China) and on condition that the same has a technical application. Therefore, so far all these legal systems have the requirement of “technical application” on their agenda by contrast only the USA sticks to the “usefulness” criteria. Maybe that is why the USPTO is being confronted with a flood of applications, i.e., thousands of patent applications sent to the USPTO, resulting in the USPTO granting trivial patents. The TRIPS Agreement was negotiated by delegations that represent the dominant interests of another era. Therefore, software was largely considered unpatentable. However, it is submitted that the important thing is to enhance productivity in all industries, including information technology, etc., therefore, several nations have and are affording protection to software or computer programs either through copyright laws or by way of patenting. There is no doubt that computer programs (independently or per se) are protected as “literary works”, and also in addition, patentable as technical inventions. The authors, however, feel that both the approaches of protecting software/ computer programs have some negative as well as positive
aspects. The drawback of copyright protection is that the same does not protect ideas. In inventing software or a computer program, a significant amount of hard work, technical innovation and ideas will be put in by the inventor and the same should be duly recognized. Unfortunately, copyright overlooks this aspect of an invention. But the same is recognized and accepted by the patent law. Patent law gives satisfaction to the inventor that his intellect, his technical imagination and mental expressions will be protected. Nations, like India, UK, USA, etc. which initially did not recognize patent protection for software or computer programs, have appreciated and understood the need for granting patent protection to software. Therefore, with advancement of time and technology, talk about patent protection of software has gained momentum. The growing economic significance of computers in all its forms gives software patents this controversial status. However, the authors have found a drawback of patent protection for software or computer programs in as much as software has a limited period of economic life.21 Software lifetimes are often no more than about 10 years on average22and the time period of patent protection is 20 years. If patents are granted then the monopoly effect may well lead to blockage of progress and development in the technology industry. But one also needs to address the issue at hand. In this age of information, technology, computers, etc., one needs to be flexible and dynamic in one’s approach. With this approach now prevalent across the globe, software is becoming patentable in most jurisdictions subject to certain restrictions. Software patents are used by firms and other enterprises to gain a competitive advantage vis-a`-vis competitors in that they represent a government sanctioned monopoly permitting the patent holder to exclude access to a competitive lucrative market other than by licensing. To strike a concluding note it is true then that, to a certain extent, software patents act as a fulcrum in the playing field.
Dr Harshita Kumar ([email protected]) and Dr Deepesh Kumar, RML National Law University, Lucknow, India.
21
Software lifetime is defined as a period of time since the birth of a software system when it is supplied for usage until its death when it ceases to be used and is abandoned, but particularly focused on the case when the death is followed by replacement, “A Cost Analysis of the Software Dilemma: To Maintain or to Replace. In: Proc. 22nd Annual Hawaii International Conference on System Sciences, pp. 89e90, vol. III, IEEE, 1989. 22 http://www.graco.c.u.-tokyo.ac.jp/-tamai/pub/icsm92.pdf.
available at www.sciencedirect.com
www.compseconline.com/publications/prodclaw.htm
Protecting software programmes vis-a`-vis patentability of software5 Harshita Kumar, Deepesh Kumar RML National Law University, Lucknow, India
abstract Keywords:
A patent is an official document that confers proprietorship of an invention on the recip-
Software programs
ient. A grant of a patent is preceded by examination of applications by the patenting
Patent
authority but the final responsibility for validating or invalidating a patent lies with the
Patentability
courts under challenge. The fundamental principle behind patents is that the governmental authority awards exclusive control over an invention for a fixed number of years, to the individual who first discloses the invention within its territory. In most systems a patent is granted to whichever applicant is first to submit a detailed description of the invention, provided the applicant can satisfy the patent authority and the courts through litigation regarding certain conditions laid down by patent law. In instances where strong public policies outweigh the policies behind granting patent exclusivity, the scope of a patent may be limited. ª 2011 Harshita Kumar and Deepesh Kumar. Published by Elsevier Ltd. All rights reserved.
1.
Introduction
A patent is an intellectual property right relating to inventions and is the grant of exclusive right, for limited period, provided by the Government to the patentee, in exchange of full disclosure of his invention, for excluding others, from making, using, selling, importing the patented product or process producing that product for those purposes. The purpose of this system is to encourage inventions by promoting their protection and utilization so as to contribute to the development of industries, which in turn, contributes to the promotion of technological innovation and to the transfer and dissemination of technology. Under the system, patents ensure property rights (legal title) for the invention for which patent have been granted, which may be extremely valuable to an individual or a company. One should make the fullest possible use of the Patent system and the benefits it provides. Patent right is territorial in nature and a patent obtained in 5
one country is not, as such, enforceable in another. The inventors/their assignees are required to file separate patent applications in different countries for obtaining the patent in those countries.1 Patents are granted in regard to inventions arising from new technology. The rights they ascribe to the inventor include the right to exclude others from utilizing the patented invention for a specified amount of time, which is usually 20 years. In return for obtaining this grant, an inventor must describe the invention in detail to give notice to the public to enable one of ordinary skill in the art to which the invention pertains to make and use the invention.
2.
Efficiency of TRIPS vis-a`-vis Article 27
Industrial countries in the past had their own patent laws and offices. Those seeking protection in a specific country had to
This paper derives from a conference paper presented at the First International Conference on Computing Business Applications and Legal Issues (ICCBALI 2011) Institute of Management Technology Ghaziabad, India and Winona State University, USA, March 3e4 2011. 1 General information for Filing Patent Application in India, published by Office of the Controller General of Patents, Designs and Trade Marks. 0267-3649/$ e see front matter ª 2011 Harshita Kumar and Deepesh Kumar. Published by Elsevier Ltd. All rights reserved. doi:10.1016/j.clsr.2011.07.011
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apply for a national patent and obey local laws. With increasing globalization, international agreements were made and organizations founded to reconcile regional differences. The 1883 Paris Convention was based on the principle of reciprocal national treatment and therefore dealt more with international comity than the unification of patent laws. The1970 Patent Cooperation Treaty finally implemented international one-stop patents. Both treaties are administered by the WIPO (world intellectual property organization). The new trend is to include property matters in trade agreements. In 1995, the WTO passed the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) to reconcile the world’s patent laws. The agreement imposes uniform minimal standards modeled after the laws of industrialized nations and is part of the General Agreements of Tariffs and Trade (GATT), the purpose of which was to eliminate trade barriers. Under TRIPS, signatory countries are required to make patents available for “any inventions in all fields of technology”.2 Further they cannot discriminate against technologies (except, in some respects, in the field of biotech).TRIPS is subject to interpretation. There is no any reason to doubt that having a strong patent regime will help in the promotion of industrial and scientific development but the real point is whether it is conducive to the winewin policy as adopted by the new globalization and economic order. Article 27 of the TRIPS Agreement in itself has provided some conditions to exclude patentability of products especially for reasons of public health, ordre public and public morality. As the least developed countries, have no legal framework and technical capacity to implement article 27 of the TRIPS Agreement, they can exclude some matters from patentability which can be a barrier to their technological and economic development. But such exclusion in their respective
2
Article 27
(1) Subject to the provisions of paragraphs 2 and 3 patents shall be available for any inventions, whether products or processes, in all field of technology, provided that they are new, involve an inventive step and are capable of industrial application. Subject to paragraph 4 of article 65,para 8 of article 70 and para 3 of this article, patents shall be available and patent rights are enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced. (2) Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect or republic or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law. (3) Members may also exclude from patentability: (a) diagnostic, therapeutic and surgical methods for treatment of humans and animals: (b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the pro-tection of plant varieties either by patents or by an effective sui generis system or by any combination thereof.
jurisdiction does not protect their interest at all as exclusion from patentability of certain subject matter does not exclude the same from patentability in another region or country. The TRIPS treaty has no time limitation. It is valid as long as the WTO as a whole cannot agree to change it. The organization of WTO is far removed from democratic participation, and many WTO members are dictatorial states. If any country wants to opt out of TRIPS, it will have to leave WTO, thereby risking a collapse of its exporting industries. The Treaty was negotiated in backrooms between ministerial officials and, for most of the world’s languages, translations do not even exist. All these considerations make it imperative to interpret the TRIPS Treaty with the greatest care and to make extensive use of the flexibility which it allows, so as to achieve a fair balance of rights and obligations under the overall objective of Free Trade which the Treaty serves. The drafters were aware of these problems; therefore, they incorporated provisions such as Articles 7 and 8 in the TRIPS Agreement.
3. The varying treatment of patentable subject matter Economics are the driving force behind the filing of patent applications. Software is now the main component for determining the success of a particular commercial application of computer technology. They now focus not so much on selling their proprietary hardware butmore on providing integrated computing solutions to business problems, of which the software component is a crucial part from the customer’s point of view. Across the globe, computer programs or software have been given protection, i.e. a legal cloak either in the form of copyright or patents, etc.3 However, with advancement of time and technology, talk about patent protection of software has gained momentum. Software patents are one of the most contentious issues in intellectual property rights worldwide. The growing economic significance of computers and computer programmes gives software patents this controversial status. The last decade has seen a decisive shift in economic and commercial focus away from the hardware component towards the software element. Software patents are used by firms and other enterprises to gain a competitive advantage vis-a`-vis competitors in that they represent a government sanctioned monopoly permitting the patent 3 Methods of protecting intellectual property in computer programs.
Copyright protects code from copying and public dissemination. However, the protection offered is for the particular arrangement of data, not for the ideas represented by that data. Database right protects databases whether created by software or created by human beings, for example, data tables which might be used by a computer program to do its job, however, this offers only limited protection to the constituent parts of the program itself. Confidentiality protects the source code itself from dissemination to anyone outside the owner/producer of it. Patents, however, protect the concepts and methods associated with the “Industrial Application” of computer programs.
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holder to exclude a competitor lucrative market. To a certain extent, software patents act as the fulcrum in the playing field. The software patent does not have a universally accepted definition. One definition as suggested by the Foundation of a Free Information Infrastructure is that a software patent is a “patent on any performance of a computer realized by means of a computer programme. Software has become patentable in recent years in most jurisdictions, although the same is subjected to certain restrictions in some countries. The number of software patents has risen rapidly. The patentability of software based “business methods” has further fuelled the debate, especially as concerns the possibility that low quality patents might negate the fledgling electronic commerce sector. Important issues concerning software patents include: * where the boundary between patentable and non-patentable software should lie; * whether the inventive step and non-obviousness requirement is applied too loosely to software; and * whether patents covering software discourage, rather than encourage invention. Having presented a brief introductory note on software patents, this paper now goes on to discuss the varied treatment accorded to this subject matter within a number of selected jurisdictions.
4.
The UK position
Section1(2) of the Patent Act, 1977 provides for a nonexhaustive list of areas that will not be regarded as an invention: (2) It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of: (a) discovery, scientific theory or mathematical method; (b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever; (c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; (d) the presentation of information. but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such. Clause(c) of this provision puts a bar on a program for a computer. However, in this adage of information, technology, power, etc., the UK judiciary has started to provide a cartilage-like interpretation to its statutory provision. The Court in Aerotel v. Telco and Macrossan’s application4approved a four step test proposed by the UK patent office, for the purpose of granting software patents: 4
[2006] EWCA Civ 1371.
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(a) properly construe the claim, which analyses the scope of the potential monopoly before moving on to deciding whether the area is excluded; (b) identify the actual contribution. This step looks at whether the patent application adds to human knowledge. The court outlined that it is the substance rather than the form of the claim that is important. (c) ask whether it falls solely within the excluded subject matter, this deals with the Article52(3)question, the wording of the step indicates that if it falls partially within one or more of the excluded areas it will pass the third step. (d) check whether the actual or alleged contribution is actually technical in nature. In the most recent judgment5 by the UK Court, Kitchin, J. observed that the current position as regards computer programme claims in the UK is that the same will be granted by the UK patent office, with the aforementioned case’s criterion of the four step test being used.
5.
Position in the USA
In the US, the Constitution and the Patent Statutes define the boundaries and scope of patent protection. Through the 1970s, software was considered equivalent to a mathematical algorithm or laws ofnature,6 and thus was not patentable.7A Supreme Court ruling in 1981 drastically changed software patenting. While it did not fully establish the software patenting standards in place today, the Diamond v. Diehr decision set the ball rolling for later precedent-setting decisions that further extended patents to software. The applicants in Diehr claimed a computer-aided process for “molding raw, uncured synthetic rubber into cured precision products. The Court proposed that “transformation and reduction of an article to a different state or thing is the clue to patentability of a process claim that does not include particular machines”, the Court noted that it was beyond dispute that the claimed process transformed an article, uncured synthetic rubber, into a different state or thing. The Court’s conclusion that applicants claimed an eligible process was “not altered by the fact that in several steps of the process a mathematical equation and a programmed digital computer were used.” The Court further observed that in the instant case, the applicants did “not seek to patent a mathematical formula. 5
Astron Clinica and Ors v. The Comptroller General of Patents, Designs and Trademarks. 6 Apache and Send mail are two very successful open-source programmes, in the sense that they are the most often used programs in their categories. However, few non-IT people have heard of them. See Andrew Leonard, Apache’s Free Software Warriors, SALONMAG. (Nov. 1997), available at: http://archive.salon.com. com/21st/feature/1997/11/cov_20feature.html. 7 The Patent Act of 1952 defines the following as patentable inventions: “any new and useful process, machine, manufacture, or composition of matters, or any new and useful improvement thereof.” 35 U.S.C. Section 101 (2004). Courts have long held that mathematical formulae, algorithms, and laws of nature are not patentable subject matter under the Patent Act.
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instead they sought patent protection for a process of curing synthetic rubber.” According to Rehnquist, J, who wrote for the majority, “the claims must be considered as a whole.” The ruling established that the algorithm contained in the patentee’s software was not protected as an abstract idea, but rather in its application in the rubber curing process. The author infers that in the USA, the USPTO does not require patentable inventions to be of a “technical” nature (unlike the Indian and European scenario), but that they just fulfill a “usefulness” criterion. The decision of Diehr was voiced in 1994 by the Court of Appeals for the Federal Cicuit (CAFC)in In re Alappat.8 The CAFC observed that “such (alleged) programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” In1998, the CAFC made another landmark ruling striking down the “business method” exception. In State Street v. Signature Financial, the CAFC rejected the non-statutory claim based on “unpatentable” abstract ideas, but also went further in holding the “business method exception” itself to be invalid. Thus it can be inferred that, though the door to allow entry of software patents was unlocked in 1981 by the ruling in Diehr, the doors were opened in 1994and subsequently again in 1998 in the ruling by CAFC.
6.
The position in Europe
In most European countries the traditional view with regard to patents is that patents protect technical inventions and technical progress. According to the EPC, an invention is patentable, if: 1. 2. 3. 4.
it is not excluded by Article 52(2) and (3) of EPC9 it is novel (article 54) it involves an inventive step, i.e., non-obvious (article 56) it is capable of industrial application (article57)
However, although programs for a computer are “as such” explicitly excluded from patentability, a method may still 8
33F.3d 1526, 1537 (Fed. Cir. 1994). Art. 52(2): “the following in particular shall not be regarded as inventions within the meaning of paragraph 1: 9
(a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business and programmes for computers; and (d) presentations of information”.
Art. 52 (3): “the provisions of paragraph 2 shall exclude patentability of the subject matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject matter or activities as such.”
bepatentable even if the claimed subject matter defines or involves a business method or a computer program. The EPO first held in 1987in the Vicom case,10 that the fact that an invention uses a computer programme will not, in itself, exclude it from patentability. In that case, claims to a mathematical method for image processing were allowed. The EPO concluded that the method claimed made a contribution to the art in a field not excluded from patentability under Article 52 of the EPC. The process of enhancing images gave the claims a technical character. In1998, the EPO held in the IBM case11 that patent protection for a computer programme was available if such programme had a technical effect beyond the way it operates the computer. In the Queuing systemcase12,the EPO had found that a patent application for a system involving software for determining the queuing system for serving customers at plural service points was patentable. The EPO concluded that the problem the invention was solving was the means of interaction between the components of the systems (the terminals). This was a technical problem, and the invention had a technical character. The present position in Europe as regards software protection is that, despite the new guidelines, it is still not completely clear what types of computer programs are patentable or what the same should do to give rise to a new technical effect. Much may depend upon the way the patent is drafted. A patent emphasizing “hardware” rather than software features is more likely to be granted. However, the final judgment is still left with the national courts, which are not bound by the decisions of the European or national patent offices and could come to different decisions. So far, this paper has discussed the legislative patent framework of various developed nations from the West. There are two major economic giants from the East, namely China and India, which have achieved rewards themselves in the race to appear on the ‘roadmap’ of the international financial market. Therefore, it is prudent to discuss the Chinese and Indian stand on the issue of protection of computer programmes or software.
10 http://legal.european-patent-offic.org/dg3/biblio/t840208ep1. htm; last visited on 11 December 2009. The patent application in this case was for a method/apparatus for digitally processing images in the form of a 2-D array to produce an enhanced image on the screen. Here the examining division refused to grant the patent because it was directed to a computer programas such and/or a mathematical method. The EPO Technical Board of Appeal disagreed and distinguished situations where a process was carried out on numbers and produced a result solely in numerical form (an abstract mathematical method-producing no direct technical result) with other cases such as this where the method was used in a “technical process”. 11 http://eupat.ffii.org/papri/epo-t971173/index.en.htm; last visited on 11 December 2009. In this case a claim related to a method of displaying information (onscreen) by displaying a first window, detecting a second window displayed in the first window and moving obscured information (in the first window) to where it was not obscured. There was also claim to a program to make a computer execute that operation. Was this a claim to program “as such”? 12 http://www.buildingipvalue.com/05XB/064067.htm.
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7.
The position in China
The rapid development of the information industry and the popular application of networks have made computer software (“software”) a core part of the network information era. Since software is so important, protecting it is essential. Currently, the international prevailing practice in software protection is to place protection standards within the purview of copyright laws. Patent and trade secret regulations are also used to protect software. The exact definition of software can fluctuate nation to nation, as each nation adjusts the definition provided by the World Intellectual Property Organization (“WIPO”)13 to address their respective situations. In China, Article II of the Order of the State Council of the People’s Republic of China defines “computer software” as “computer programs and the relevant documentation thereof.”14
8.
Copyright protection for software
Copyright protection is the most widely used legal protection model for software internationally. As a type of “works”, copyright law offers a broad scope of protection to software. Because copyright law standards to qualify as works are not high, only formal innovation is needed. Copyright Law of the People’s Republic of China explicitly covers software.15 In 1991, China promulgated the regulations specific to software 13 According to WIPO Model provisions on the protection of computer software, Geneva 1978,“computer software” refers to: computer program, program description and program user instruction. Computer program means“. a set of instructions, expressed in woods, codes, schemes or in any other form, which is capable, when incorporated in a machine readable medium of causing a machine having information processing capabilities to indicate, perform or achieve a particular function, task or result.” “Program description” means a complete procedural presentation in verbal, schematic or other form, insufficient detail to determine a set of instructions, constituting a corresponding computer program; “user instruction” means any auxiliary materials, other than a computer program or a program description, created for aiding the understanding or application of a computer program. 14 Regulations on the protection of Computer Software. Article 3 provides for definitions for the following terms:
1. COMPUTER PROGRAM: refers to the coded instructional sequences e orthose symbolic instructional sequences or numeric language sequences which can be automatically converted into coded instructional sequences e which are for the purpose of obtaining a certain result and which are operated on information processing equipment such as computers. The source code program of apiece of computer software and its object code program should be regarded as one work. 2. DOCUMENTATION: refers to written materials and diagrams which are used to describe the contents, organization, design, functions and specifications, development circumstances, testing results and method of use of the program, for example program design explanation, flow charts, user manuals, etc. 15 Article3: for the purposes of this law, the term “works” include works of literature, art, natural science, social science, engineering technology and the like which are expressed in the following forms: (8) computer software.
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protection e Regulations on the Protection of Computer Software (“Regulations”). According to the Regulations, software that is independently developed and that is in a material form, such as magnetic media or CD, will enjoy copyright protection.
9.
Patent protection in China
Software protection is within the purview of the Patent Law of China. Inventions composed of software programs are significantly different from traditional “works” because they consist of a large amount of creative work. Therefore, the software developer’s ideas are the most valuable and are most in need of protection. If technicians obtained the developer’s design ideas, they can easily design a program e via reverse engineering16, reverse coding, or reverse assembly e that shares the same or similar function. However, technical ideas cannot be protected by traditional copyright law. Under copyright law, only the expressive forms of works are within the purview of protection; ideas and “function” are excluded from the purview. For the programs depicting technical ideas, especially those inventions involving computer programs, patent law protection usually adopts the functional characteristics to limit their scope of protection. Patent protection is characterized by its exclusive and monopolized rights. Once patent rights are granted to computer software, any similar inventions, even those developed independently by others and falling into the scope of patent protection, will constitute an infringement.
10.
The position in India
Patenting systems in India are governed by the Patents Act, 1970, which was enacted by the legislature in lieu to fulfill its obligations as a signatory to the TRIPS Agreement. On 1 January 2005 the new Patents Amendment Ordinance, 2004 was promulgated. The Ordinances ought to bring the issue of embedded software within the regime of patentable subject matter. Thus, hitherto, where the Patent Act prohibited patenting of computer software per se, the Ordinance qualified this by stating that “a computer programme per se” is not patentable “other than its technical application to industry or a combination with hardware”. 16 Reverse engineering is the process of discovering of technological principles of a device, objector system through analysis of its structure, function and operation. Reverse engineering has its origins in the analysis of hardware for commercial or military advantage. The term reverse engineering as applied to software means different things to different people. “Reverse engineering is the process of analyzing a subject system to create representations of the system at a higher level of abstraction”, Chikofsky, EJ; Cross, JH, “Reverse Engineering and Design Recovery: A Taxonomy in IEEE Software”, pp. 13e17, IEEE Computer Society, January, 1992 at http://www.computer.org/portal/web/guest/ home.The term reverse engineering can also be seen as “going backwards through the development cycle”, Warden, R, “Software Reuse and Reverse Engineering in Practice”, 1992, p. 283, Pub. Chapman and Hall, London, England, 1992.
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It is suggested that the requirements laid down in the Ordinance designed to prevent future litigation or claims of infringements being raised, remains a distinct probability even after a patent has been granted. The Ordinance ensures adequate safeguards against misuse of patent rights and vests enough power with the Government to intervene and ensure that patented inventions are available for the public at a reasonably affordable price. Further, Nasscom, the Indian software industry body, has managed to incorporate provisions that will allow patent protection for software in combination with or embedded in hardware, such as in computers or cell phones and a variety of other gadgets. Similar to EU nations, the gaining of patent protection for software depends more on the drafting skills of the patent engineering India too. If the claims are drafted in such a way as to reflect that the invention is not software perse, it may qualify for patent protection. So far the Indian Patent Office as well as the Indian judiciary has not had the opportunity to examine the legality of grant of patents to inventions involving software. However, it is true that not only the Indian legal fraternity but also software multi-nationals across the world (which are slowly shifting their base to India) are keeping a close watch on this question. The best example would be the case of Microsoft, whose tally of 306 patent applications in India in 2004 was a fivefold increase from the 67 patent applications filed in 2003. At this juncture it is appropriate to observe why software or computer program perse have not been accorded patent protection, but instead attract rights that reside within copyright. It is taken as a given and established fact that patents are granted only when the claim is to an invention. Computer programmes perse are not so held because they merely describe an abstract idea. Although, computer programmes are not patentable per se, a claim to a manner of manufacture, which results in a tangible product, which requires the application of an algorithm or a particular computer programme, may indeed be patentable. The Chinese system is akin to that of India’s in this respect. Though the Chinese legislation does not use the term per se, its legal the provisions clearly state that software that is “independently developed” and in a material form, such as CD, etc., will enjoy copyright protection. Analogies between the legal systems of Asia’s two economic giants that elucidate the aforementioned requirement can be found in the Indian system. According to Indian law, software per se (i.e., software by itself) shall be a subject matter of copyright. However, as far as patent protection to software is concerned, the Chinese patent system is of the view that inventions comprising software or computer programs are clearly distinct from traditional “works”. The reason for this is that the former involves a large amount of creative work. However, the ideas implicit in the development of software are very valuable and, therefore, are in need of protection. Since ideas are not protected under copyright law, such technical ideas are given patent protection. Patent examination (“Guidelines”) promulgated by the State Intellectual Property Office (“SIPO”), stipulate general principles and specific instances for software protection, saying in effect that software when embedded in an invention can receive patent protection only and only when the same has some technical application.
As regards patent protection of software it is also noted that the Amendment of 2005 to the Indian Patents Act 1970, incorporated the provision that in order to be patentable software should be capable of being embedded in hardware and the same should have a technical application. Therefore, from the above analysis of Chinese and Indian systems, it is clear that both legal systems are at one with one another so far as protection of software or computer programs is concerned.
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Critical analysis of the Indian system
It is submitted that India has adopted the more conservative approach, i.e., the focus is not on software or computer programs per se but on whether the software or computer program is “sufficiently technical in nature”. On the other hand, in the USA, the USPTO does not require this but emphasizes that it should fulfill a “usefulness” criterion. This is the reason why in the USA, it has led to patenting of even abstract rules and methods for performing human activities, known as “business methods”. Here, it would be relevant to note that the USA form of issuing patents for software has resulted in a number of trivial patents being granted. In a report back in 2002 by the Washington based National Science Foundation, it was found that there had been an acceleration in the grant of patents in recent times. It is submitted that the US Supreme Court should restrict the patentability of software-related patents, in particular that of business methods and thereby narrow its scope. Under the Indian scenario, computer programs per se are excluded from the ambit of patent protection but are granted only copyright protection.17 A consequence of this is that software developers tend to go to the USA and seek patent protection for the same. The Indian system for this is being criticized; however, the author opines that the intent of the Indian legislature behind such provisions was correct and was in support of the healthy growth of the industry. According to the framers of Indian intellectual property rights laws, software is a set of instructions in a language that computers understand. These instructions are nothing more than expression. It is known that the computer understands this expression in a different language, i.e., objectcode18 and that the same expression is readable by humans in higher level language, i.e., source code. It is noted then that the set of instructions fed into a computer takes a different form from that of source code and that expression is given protection under copyright law. The Indian legislature regards software as nothing more than expression, therefore does not think it prudent to grant patent protection to computer software in so far as creating a monopoly over such ‘expression’ for 20 years. It is submitted that the fact that the Indian judiciary and the Indian Patent Office have not yet been confronted by any 17 Section 2(ffb) defines “computer” as “any electronic or similar device having information processing capabilities.” Section 2 (ffc) defines “computer program” 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.” 18 Object code form is that form in which a computer runs it.
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litigation is evidence of the fact that Indian law regarding protection of software is not infected with fallacies. It may be argued that India is not abiding with the provisions of TRIPS but the author defends the Indian standby noting that TRIPS accords a degree of flexibility (discretion) to all the member nations and India is simply availing itself of this benefit. India has sui generis legislation for the protection of copyright and, within its umbrella, covers the issue of protection of computer programs per se. Moreover, the socioeconomic framework of Indian society is quite distinct from that of other developed societies. The provisions of TRIPS, including the effectiveness obligation in Article 27, should be read in the light of the agreement’s objectives. The same should be read alongside Articles7and 8 of TRIPS.19 It should be noted that the objective of TRIPS is to balance members’ intellectual property protection obligations with their right to promote social and economic welfare. This means that TRIPS not only desires member nations to abide by their intellectual property obligations, but that simultaneously they should also cater for their respective socioeconomic needs. An objective-based interpretation of TRIPS necessitates adherence to the Article 7 requirement that intellectual property mechanisms balancing members’ rights and obligations be read alongside the Article 8principles, which vest members with the right to prioritize their national public interests. India, therefore, is simply following the principles set forth by the TRIPS Agreement. However, the Government of India, in order to meet the December 31 deadline for complying with its commitment to the World Trade Organization (WTO) on patent law, promulgated the Ordinance known as The Patents (Amendment) Ordinance, 2004.20 Apartfrom the many other introductions
19 Article7: “contribution to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge.”Article8: “members may, in formulating or amending their laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socioeconomic and technological development, provided that such measures are consistent with the provisions of this agreement.” 20 The earlier amendments had, inter alia, provided for the modalities for a ten-year transition facility (which India had negotiated at the time of its accession to the WTO), commencing from the 1st January 1995. As a consequence, the law was required to be amended further in respect of India’s obligations under the TRIPS Agreement, due from 1st January 2005. Given the importance of the issues, the Government undertook broad- based and extensive consultations involving different interest groups on aspects critical to the changes which were necessary in the Patents Act, 1970.These included country-wide interactive sessions with various interest groups, including scientists, academicians, economists, representatives of various industry sectors (such as pharmaceutical, biotech and software), chambers of commerce, private and public sector units, journalists, non- governmental organizations, representatives of State Governments, lawyers and attorneys and other interest groups and extensive inter-Ministerial consultations. While considering this amendment to the Act, efforts have been made not only to fulfill India’s final obligations under the TRIPS Agreement, but also to simplify and rationalize the procedure governing grant of patents so as to make the system more efficient and user-friendly.
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and amendments to existing patent law, the new law states that patent protection shall be given for software in combination with or embedded in hardware such as mobile phones, TVs and computers. This means that software per se will only be given copyright protection if the alleged software or computer program is in combination with hardware and shows technical output. Only then shall the same be given patent protection and any illegal act amount to infringement of the inventor’s patent rights. The principle underlying this provision is that computer programs per se being merely a set of instructions (expressions) are not patentable but only copyrightable as the latter protects expression. However, by the virtue of the new patents law, when the alleged computer program is embedded in hardware to serve a technical function then the same dons the garb of functional value and this is what is protected by patents law. When this is combined with hardware the alleged claim does not remain ‘perse’. It is submitted that on combining computers software (excluded category) with hardware (not excluded category); the same is also covered under the ambit of the non-excluded category and therefore is accorded adequate patent protection. India has a unique opportunity to make its mark in the silicon design space because of its strong semi-conductor engineering capacity and its obvious competence in software design and services. With India’s traditional strength in software development, as well as its growing expertise in chip design, several top semi-conductor and systems companies are setting up their R and D centres in India with emphasis on embedded software. Apart from the fact that most international semi-conductor companies have some sort of presence in India, Indian companies, themselves, are now engaged in the business, either through the provision of required services or directly through the development of embedded software. This amendment will without doubt provide a huge incentive for India’s information technology industry, such as the semi-conductor industry, to innovate, create and develop embedded software. It can be assured of the same level of protection in India as may be enjoyed elsewhere in the world. Therefore, the Ordinance has definitely had its use and established its relevance in today’s India, particularly within the growing domestic semi-conductor industry. This, along with judicial regulation will surely ensure a judicious use of patent protection while allowing the industry to grow through innovation and invention, thereby mitigating the risk of trivial patents stifling real progress. This is the reason why a patent should always be treated as a “double edged sword” to be wielded with caution and sensitivity.
12.
Conclusion
In conclusion there are various approaches to protect patentable subject matter. All of these approaches have their own unique qualities; however, not all patentable subject matter is fit to be given protection under all the legal approaches. The object of this paper has been to understand the need for protecting software or computer programs, and to compare and analyze the different approaches of various countries towards protecting their software/computer programs.
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On analyzing and examining the approaches of various legal systems, namely the UK, USA, EU, India, China, the author can observe that, excepting the USA, all of these legal systems have controls over the grant of patent protection to software or computer program. For instance, the UK will only grant patent rights when the “alleged” software shows that the same has a “technical application”. The present position in Europe as regards software protection is that despite the new guidelines it is still not completely clear what types of computer programs are patentable or what the same must do to satisfy the new technical effect requirement. Much may depend upon the way the patent is drafted. A patent emphasizing “hardware” rather than software features is more likely to be granted. India and China do not grant patent protection of computer programs perse or if the same has been developed “independently”. Instead, both Asian legal systems afford copyright protection for computer programs perse or computer program developed independently. They grant patent protection only and only when the “alleged” software can be embedded in hardware (India) or be presented in a material form, e.g. a CD (China) and on condition that the same has a technical application. Therefore, so far all these legal systems have the requirement of “technical application” on their agenda by contrast only the USA sticks to the “usefulness” criteria. Maybe that is why the USPTO is being confronted with a flood of applications, i.e., thousands of patent applications sent to the USPTO, resulting in the USPTO granting trivial patents. The TRIPS Agreement was negotiated by delegations that represent the dominant interests of another era. Therefore, software was largely considered unpatentable. However, it is submitted that the important thing is to enhance productivity in all industries, including information technology, etc., therefore, several nations have and are affording protection to software or computer programs either through copyright laws or by way of patenting. There is no doubt that computer programs (independently or per se) are protected as “literary works”, and also in addition, patentable as technical inventions. The authors, however, feel that both the approaches of protecting software/ computer programs have some negative as well as positive
aspects. The drawback of copyright protection is that the same does not protect ideas. In inventing software or a computer program, a significant amount of hard work, technical innovation and ideas will be put in by the inventor and the same should be duly recognized. Unfortunately, copyright overlooks this aspect of an invention. But the same is recognized and accepted by the patent law. Patent law gives satisfaction to the inventor that his intellect, his technical imagination and mental expressions will be protected. Nations, like India, UK, USA, etc. which initially did not recognize patent protection for software or computer programs, have appreciated and understood the need for granting patent protection to software. Therefore, with advancement of time and technology, talk about patent protection of software has gained momentum. The growing economic significance of computers in all its forms gives software patents this controversial status. However, the authors have found a drawback of patent protection for software or computer programs in as much as software has a limited period of economic life.21 Software lifetimes are often no more than about 10 years on average22and the time period of patent protection is 20 years. If patents are granted then the monopoly effect may well lead to blockage of progress and development in the technology industry. But one also needs to address the issue at hand. In this age of information, technology, computers, etc., one needs to be flexible and dynamic in one’s approach. With this approach now prevalent across the globe, software is becoming patentable in most jurisdictions subject to certain restrictions. Software patents are used by firms and other enterprises to gain a competitive advantage vis-a`-vis competitors in that they represent a government sanctioned monopoly permitting the patent holder to exclude access to a competitive lucrative market other than by licensing. To strike a concluding note it is true then that, to a certain extent, software patents act as a fulcrum in the playing field.
Dr Harshita Kumar ([email protected]) and Dr Deepesh Kumar, RML National Law University, Lucknow, India.
21
Software lifetime is defined as a period of time since the birth of a software system when it is supplied for usage until its death when it ceases to be used and is abandoned, but particularly focused on the case when the death is followed by replacement, “A Cost Analysis of the Software Dilemma: To Maintain or to Replace. In: Proc. 22nd Annual Hawaii International Conference on System Sciences, pp. 89e90, vol. III, IEEE, 1989. 22 http://www.graco.c.u.-tokyo.ac.jp/-tamai/pub/icsm92.pdf.