ii)                   machine, apparatus or other article;

iii)                 substance produced by the manufacture

As per the present legal interpretation of the above definition of the invention, the patentable subject matter in addition to being novel and useful, should be about manner of manufacture and it must result in a non-living and tangible thing. From this explanation, it can be inferred that software, as such, in the form of a mathematical algorithm may not be a patentable subject matter as it is not about manner of manufacture and it does not result in a tangible thing.

This situation changes when software is combined with a machine/computer and the machine/computer under the influence of the software, becomes a 'novel' machine/computer and this becomes patentable subject matter.

Contrary to popularly held belief that software related patents are not permitted by Indian Patent Office; there are several instances where software related patents have been granted by the Indian Patent Office. One example is the Software related patent no 176178 granted to IBM, USA for "System for Creating an Application Program Package'" by the Indian Patent Office.

Proposed Changes in the Law

The Patents (Second Amendment) Bill, 1999 to the Indian Patents Act, 1970 has been brought out in the light of the TRIPS Agreement and to make the Act a modern, harmonised and user-friendly legislation. However as far as Software Patenting is concerned, the proposed amendments to the act may be considered a retrograde step as it explicitly excludes computer programs from patentability.

This becomes evident if we consider the non-patentable subject matter, which have been specifically included by way of addition to Section 3 (of Indian Patents Act, 1970), which deals with non-patentable inventions. The proposed bill in addition to other non-patentable subject matter excludes "a mathematical or business method or a computer program or algorithms" from patentability.

Once these amendments are affected into the Act, patenting in software will become impossible as compared to the present legal position where the Indian Patents Act does not exclude, explicitly, computer programs from patenting.

Leveraging through Patents

Among companies with patent portfolios, it is a very common practice for one company to offer to cross-license one or more patents of its own when accused of infringing a patent belonging to another company. Through this practice, the patent assets of both companies are increased.

Small and medium software companies can benefit from patenting in software by reaping profits through licensing their patents to bigger corporations. In fact, lack of patent protection makes it easier for bigger corporations to copy ideas from the software developed independently by small and medium software companies.

Thus, software companies should begin evaluating the best internal procedures for identifying potentially patentable ideas and pursuing patent protection for such ideas. Since software-related patent applications are often relatively expensive and time-consuming, appropriate business decisions should also be made to support such an endeavor.

Urgent Needs

While making provisions for patenting in some form in the Indian Patents Act, we must also address the procedural realities of the Indian Patent Office. The facilities at four branches of the Indian Patent Office must be strengthened so that examiners are able to conduct an effective search while deciding the novelty and inventiveness of Software related inventions. The Patent Office should have an Examiner's Manual, as is done in the USPTO, providing clear cut guidelines regarding patentability of software related inventions. Examiners at four branch offices of the Indian Patent Office should be made fully conversant with the technicalities of software related inventions. Additionally an awareness drive should be vigorously launched to make the software industry fully aware of the issues involved with patenting software in India as well as abroad.

All these needs have to be addressed in right earnest before the nation really benefits from the Great Indian Software Story!

Bibliography

• Dr. Ganguli Prabhudda - 'Gearing Up for Patents - The Indian Scenario', Orient Longman, 1998

• Parulekar Ajit and D'Souza Sarita - Indian Patent Law : Legal and Business Implications , 1st Edition 2006

• IPR journal 'World patent Information' published by Elsevier Science Limited, UK

• Patents Law Manual, 1st Edition, 2005

• Website : www.patentmatics.org