The aim of this research paper is to analyse the controversies surrounding Section 3 (k) of the Indian Patent Act, 1970, and to explore the possible solutions and alternatives for improving the patent regime for software-related inventions in India. Rather, the historical trajectory of contributions towards the evolution of this class of patentable invention (mathematics methods, methods of doing business, computer programs per se, and algorithms) and this construction will consider case law relating to sub-section (k) of section 3 of the Indian Patents Act. As software is gaining global importance, the paper will also focus on the international standards and practices governing software patents. Further, the paper would include an impact study regarding section 3 (k) on innovation and growth in the software sector of India and the public interest and social welfare implications. The paper will conclude with a few suggestions and recommendations for reform and clarification of section 3(k), of the Indian Patent Act, 1970, to harmonize Indian patent law with the global trends and challenges in the field of software patents.

Well, there has been heated debate with respect to patenting of software-related inventions over time in India. Section 3 (k) of Indian Patent Act, 1970 excludes mathematical or business methods, computer programmes per se and algorithms in terms of patentability. There is settlement of the ambiguity and confusion wrought from the term 'per se' among the patent applicants, examiners, and courts that imply that some software-related inventions may be patented if not computer programmes.

Interpretation and application of section 3 (k) have been inconsistent and have not been subject to clear and definite prediction, giving rise to many challenges and disputes in the arena of software patents.

This research aims to review the controversies surrounding Section 3(k) of the Indian Patent Act, 1970, and discuss some possible solutions and alternatives to improve the patent regime in India for software-related inventions.

The aim of this research paper is to analyse the controversies surrounding Section 3 (k) of the

Indian Patent Act, 1970, and to explore the possible solutions and alternatives for improving

the patent regime for software-related inventions in India. Rather, the historical trajectory of contributions towards the evolution of this class of patentable invention (mathematics methods, methods of doing business, computer programs per se, and algorithms) and this construction will consider case law relating to sub-section (k) of section 3 of the Indian Patents Act. As software is gaining global importance, the paper will also focus on the international standards and practices governing software patents. Further, the paper would include an impact study regarding section 3 (k) on innovation and growth in the software sector of India and the public interest and social welfare implications. The paper will conclude with a few suggestions and recommendations for reform and clarification of section 3(k), of the Indian Patent Act, 1970, to harmonize Indian patent law with the global trends and challenges in the field of software patents.

The Background and Legal Framework of Section 3(k)

Section 3(k) of the Patents Act excludes mathematical methods, business methods, computer programmes per se and algorithms from being patentable inventions. The addition 'per se' means that only the computer programme itself is not patentable, but may be patentable, when combined with other things or having some technical effect.1 The historical context and reasons for its provision go back to the Patents (Amendment) Act, 2002, which introduced Section 3(k) among others into the Patents Act, 1970. The amendment was part of the streamlining process to fulfill the obligations of India under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which mandated India to offer patent protection for inventions in all fields of technology.2 However, India wanted to protect the domestic interests of its industries, especially those in the software and IT sectors, which rely heavily on innovation and creativity. India, therefore, decided to keep certain inventions outside the realm of patentability.

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How Section 3(k) affects patentability, especially in the case of some particular computer programs, algorithms, and business methods, has become a subject of heated debate and some controversy among all the stakeholders themselves-patent applicants, examiners, courts, and academics. The main debate revolves around interpretation and application of the term “per se” and the criteria in the enumeration on which is determined the technical effect or contribution of the invention. These terms are nowhere defined or guided in Patents Act or Patent Rules and the jurisprudence on it has been inconsistent with and evolving. Some of the factors considered by the Patent Office and the courts in deciding on these kinds of inventions are the presence or absence of hardware or physical components, novelty and inventiveness of the invention, problem-solution approach, industrial applicability of the invention, and the technical advancement or economic importance of the invention.

Thus, Section 3(k) of the Patents Act is a clause in Indian policy to exclude classes of invention from patentability. This binds India to international obligations while promoting national interests. Such provisions create problems and uncertainties for the patent applicant and examiner as there is no clear and uniform criterion for determining the patentability of inventions in computer programming, algorithms, and business methods. Thus further clarity and consistency in interpretation and application of Section 3(k) in the Indian patent system is necessitated.

Case Study: OpenTV Inc. vs. The Controller of Patents and Designs

OpenTV Inc. appeals to the courts against the rejection of its patent application in the Patent Office. OpenTV Inc. appealed against the rejection of its patent application by the Controller of Patents and Designs in India. The patent application was in the title 'System and method to provide gift media' and sought a network architecture and a method to enable the exchange of interactive media content distribution of any type of digital or tangible media. The Controller rejected the patent application on the ground that it fell under Section 3(k) of the Patents Act, 1970, which excludes mathematical or business methods, computer programs per se, and algorithms from patentability. The Controller found that the amended claims filed by the applicant failed to satisfy Section 59 of the Act since that section provides for amendment of claims only so far as they do not go beyond the scope of the original disclosure.

The appeal contesting the High Court of Delhi was making the point that the invention is a technical solution to a technical problem much rather than being merely a business method or computer program in that it is supposed to provide gift media interactively and personalized. The applicant further supported that amendments made to claims are within the purview of initial disclosure and were made in defense to Controller's therein-with objections. However, the Hon'ble Court dismissed the appeal, finding that the invention is no more than a computer program effecting a method of business and nothing that demonstrates inventive step or technical advancement over the prior art. The Court also agreed with Controller's view that the word “amended” claims were beyond original disclosure and also introduced new features which were not supported by specification.

The Court stated that a reading of Section 3(k) reveals that the prohibition in respect of business procedures is unconditional and is not limited by the terms 'per se' as it is in the instance of computer programs. In the context of computer programs, the expression 'per se' effectively indicates that a program is not patentable in and of itself, but when it displays a technological effect, promotion, or technical contributions, the invention may become patented.

The Court referred in this respect to Ferid Allani vs. Union of India & Ors., which laid out the metric to measure an offense against section 3(k) of the Act while dealing with the applications for patents for computer programs.

Author : Kaustubh Kumar, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

REFERENCES

1. Avadhi Jain (Khurrana & Khurrana), Do Software Patents Actually Fall Under The Ambit Of Section 3(k)?, MONDAQ (Feb. 9, 2018), https://www.mondaq.com/india/patent/671972/do-software-patents-actually-fall-under-the-ambit-of-section-3k.

2. Agreement on Trade-Related Aspects of Intellectual Property Rights, art. 27, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994).

3. Legislative Implementation of Flexibilities - India - Section 3 (k), https://www.wipo.int/ip-development/en/agenda/flexibilities/details.jsp?id=8825