India’s Patents (Amendment) Act, 2005 & Software Patents

In the last 10 years of India’s experiments with TRIPS compliance in the domain of patents, the one section in the Act that was put to a major test is Section 3. In the past a critical amendment to Section 3 was the insertion of a new sub-section 3(k) by the Patents (Amendment) Act, 2002. This sub-section, for the first time in the history of India’s patents law indirectly made at least certain aspects of computer program related inventions patentable. Accordingly, the amended law provided that what is not an invention is only ‘a mathematical method or business method or a computer program per se or algorithms’.

When the President of India promulgated the Patents (Amendment) Ordinance on December 27, 2004, a major amendment was introduced in Section 3 with respect to the patentability of computer programs. The Ordinance split the sub-section 3k into two- sub-section 3(k) and 3(ka). The excluded subject matters as originally contained in Sub-section 3(k) were provided in the new Sub-section 3(ka). They included ‘a mathematical method or a business method or algorithms’. The amended Section 3(k) read as follows:

“(k) a computer programme per se other than its technical application to industry or a combination with hardware”.

The key expressions contained in the above amendment are ‘technical application to industry’ and ‘combination with hardware’. The legislative intent behind these words were clear. If an invention is directed at computer software having technical application to industry or coupled to hardware – then it is patentable. The word ‘technical application to industry’ was identical to the ‘technical effect’ test in the European patent parlance. As such, it was a progressive legal development. The latest amendment dropped it.

The law as it stands now reverts to the original position of excluding computer program per se from patentability. In the absence of an Examination Guideline explaining what is and/or is not software per se, stake holders will have to look up to the IP Appellate Tribunal or the Courts to decide what is the extend of patentability for computer program related inventions. Yet another ambiguity brought into the law by the latest amendment.

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