In May 2017, the Kolkata Patent Office granted a patent to Apple on a ‘method for browsing data items with respect to a display screen associated with a computing device and an electronic device.’ When section 3(k) expressly prohibits patenting ‘a mathematical or business method or a computer program per se or algorithms’, how did Apple ace up the game? Let’s finally reverse engineer the dilemma of ‘per se.’
Software programs have become a necessary component of the world due to their greater effectiveness, secure interactions, and improved functionalities. Software innovation is becoming a more critical growth driver for businesses. India is significant in the world’s information technology (IT) market. As they may be accessed by users without payment and are subject to piracy and copying, software and computer programs are subject to fierce market competition. They are fairly sensitive to suffering unjustified economic loss. Furthermore, there is a severe risk of being outmoded relatively soon due to the intense competition, as the rivals might introduce a competitive product swiftly.
Why patent and not copyright?
When it comes to intellectual property protection for software, copyright and patents quickly spring to mind. Software programs are typically protected using copyright laws since developing source code and programs are equivalent to creating any literary or artistic work. The most effective approach to protect intellectual property is through a patent, but obtaining one for software requires meeting several strict requirements. Additionally, copyright violations and software piracy are not new in the digital age; with such sophisticated technology, it is possible to duplicate the complete program code. Additionally, the process, procedure, or discovery are not protected by copyright laws.
Computer programs are considered literary works under Section 2(o) of the Copyright Act of 1957. Still, the Act does not distinguish between source and object codes; both fall under the definition of a computer program’s literary work. However, the work must be original in order for software or computer programs to receive copyright protection; with that being said, fair use and reverse engineering of the program are permitted by the Act and won’t be considered violations.
Interpreting section 3(k) of the Act
‘a mathematical or business method or a computer program per se or algorithms’ cannot be patented as expressly mentioned as not an invention under section 3 k. The term “per se” is not defined in the Indian statute, but according to the Computer Related Invention (CRI) guidelines published in 2017 by the Office of the Controller General of Patents, Designs, and Trademarks, the term “per se” should be interpreted according to its standard dictionary definition. “Per se” means “by itself,” which means that you are referring to anything on its own, rather than in relation to other things, according to the Oxford Advanced Learners Dictionary.
A computer program is also defined as “a set of instructions expressed in words, codes, algorithms, or in any other form, including a machine-readable medium, that can cause a computer to carry out a certain task or produce a specific result” under Section 2(ffc) of the Copyright Act, 1957.
Therefore, the term “computer program per se” can be understood as words, codes, algorithms, or in any other form, including a machine-readable medium, that can cause a computer to carry out a particular task or produce a specific result on its own is not a patentable subject.
Revised guidelines-2017- Determination of excluded subject matter relating to CRIs
It was made clear that
“What is important is to judge the substance of claims taking the whole of the claim together. If any claim in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium falls under the said excluded categories, such a claim would not be patentable. However, if in substance, the claim, taken as a whole, does not fall in any of the excluded categories, the patent should not be denied.”
In order to be patentable, new software must actually come with a physical component. Wherever a combination of hardware and software meets the criteria for patentability and produces additional technological effects
As many as four business method patents were patented in 2017.
Business method patents- Facebook
Facebook claimed in its application that its invention is not only a computer program but “includes hardware limitation and provides technical improvements and benefits like checking privacy setting associated with the user profile .”The Chennai Patent Office accepted its application, and the patent was granted.
Apple’s media management program
Apple claimed that its invention delivers an “improved technical effect” and should be subject to patent. Surprisingly, Apple’s application was approved by the patent office and granted the patent.
Google’s information retrieval system
Google argued that its invention is not a computer program per se “but provides a technical solution to a technical problem of how to automatically identify phrases in a document collection” and obtained the patent.
Additionally, it is reiterated in a recent decision from the Delhi High Court that not all computer programs are subject to the bar under Section 3(k) of the Patents Act. If computer programs show a “technical effect” or a “technological advancement,” they might be patented.
According to the Delhi High Court’s ruling in the case of FeridAllani v. Union of India & Ors. , the majority of contemporary technologies, including cars, washing machines, and refrigerators, rely on computer programs. Computer programs are somehow included in all of these. As a result, present inventions will no longer be able to be protected if a computer program is denied just because Section 3(k) forbids patentability. The Court clarified that not all inventions based on computer programs are subject to the patentability threshold; only “computer programs per se” are. A similar decision was made in Enercon India Ltd. v. AloysWobben .
The technological solution that software or computer programs offer is evaluated in addition to the other patentability criteria described above. At the moment, four branches of the Indian Patent Offices may have slightly different practices in place, and the language of the law may appear confusing. Engineers, designers, developers, and inventors have a responsibility in such a situation to seek patent protection for software programs and, whenever possible, obtain legal precedents to increase the certainty around software patents.
4TH YEAR BALLB
CHRIST UNIVERSITY, LAVASA
 The Patents Act,1970 § 3(k), No. 39, Acts of Parliament, 1970 (India).
 IPINDIA, https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_86_1_Revised__Guidelines_for_Examination_of_Computer-related_Inventions_CRI__.pdf, (last visited August 4 ,2022).
 Ferid Allani v. Union of India, 2019 SCC 11 Del 867
 Enercon India Ltd. v. AloysWobben, No.109 of 2013.