offence related to ipr

1. INDIRA GANDHI DELHI TECHNICAL
UNIVERSITY FOR WOMEN
By: Prashant Kr. Vats,
M.tech. (IT), Ph.D. (CSE),
M.A. in Education, P.G. Diploma in Cyber Laws.
Subject - Cyber Laws & Rights
M. tech. 3rd Sem., ISM.

2. Intellectual property
• Intellectual property (IP) is a category of property that
includes intangible creations of the human intellect.
• There are many types of intellectual property:
• copyrights,
• patents, trademarks, and
• trade secrets
• Early precursors to some types of intellectual property
existed in societies such as Ancient Rome, but the modern
concept of intellectual property developed in England in
the 17th and 18th centuries.
• The term "intellectual property" began to be used in the
19th century, though it was not until the late 20th century
that intellectual property became commonplace in the
majority of the world's legal systems.

3. Intangible Assets
• An intangible asset is an asset that lacks
physical substance; in contrast to physical
assets, such as machinery and buildings, and
financial assets such as government securities.
• An intangible asset is usually very hard to
evaluate.
• Examples are patents, copyright, franchises,
goodwill, trademarks, and trade names.

4. Main purpose of IPR Laws
• The main purpose of intellectual property law is to
encourage the creation of a wide variety of intellectual
goods.
• To achieve this, the law gives people and businesses
property rights to the information and intellectual goods
they create, usually for a limited period of time.
• This gives economic incentive for their creation, because it
allows people to profit from the information and
intellectual goods they create.
• These economic incentives are expected to stimulate
innovation and contribute to the technological progress of
countries, which depends on the extent of protection
granted to innovators.

5. Intellectual property rights
• Intellectual property rights include
• patents,
• copyright,
• industrial design rights,
• trademarks,
• plant variety rights,
• trade dress,
• geographical indications,[29] and
• in some jurisdictions trade secrets.

6. Patents
• A patent is a form of right granted by the government to an
inventor or their successor-in-title, giving the owner the right to
exclude others from making, using, selling, offering to sell, and
importing an invention for a limited period of time, in exchange
for the public disclosure of the invention.
• An invention is a solution to a specific technological problem,
which may be a product or a process and generally has to fulfill
three main requirements:
• it has to be new,
• not obvious and
• there needs to be an industrial applicability.
• To enrich the body of knowledge and stimulate innovation, it is an
obligation for patent owners to disclose valuable information about
their inventions to the public.
• Eg. Patent of a technology or invention

7. Copyright
• A copyright gives the creator of an original
work exclusive rights to it, usually for a limited
time. Copyright may apply to a wide range of
creative, intellectual, or artistic forms, or
"works".
• Copyright does not cover ideas and
information themselves, only the form or
manner in which they are expressed.
• Eg Film Scripts, Codes.

8. Industrial design rights
• An industrial design right (sometimes called "design
right" or design patent) protects the visual design of
objects that are not purely utilitarian. An industrial
design consists of the creation of a shape,
configuration or composition of pattern or color, or
combination of pattern and color in three-dimensional
form containing aesthetic value. An industrial design
can be a two- or three-dimensional pattern used to
produce a product, industrial commodity or handicraft.
Generally speaking, it is what makes a product look
appealing, and as such, it increases the commercial
value of goods.

9. Plant varieties
• Plant breeders' rights or plant variety rights
are the rights to commercially use a new
variety of a plant. The variety must amongst
others be novel and distinct and for
registration the evaluation of propagating
material of the variety is considered.

10. Trademarks
• Trade dress is a legal term of art that generally
refers to characteristics of the visual and
aesthetic appearance of a product or its
packaging (or even the design of a building)
that signify the source of the product to
consumers.

11. Trade secrets
• A trade secret is a formula, practice,
process, design, instrument, pattern, or
compilation of information which is not
generally known or reasonably ascertainable,
by which a business can obtain an economic
advantage over competitors and customers.
• There is no formal government protection
granted; each business must take measures to
guard its own trade secrets (e.g., Formula of
its soft drinks is a trade secret for Coca-Cola.)

12. Objective of intellectual property law
• To protect rights of Inventors
• Economic growth
• Morality
• Infringement,
• misappropriation,
• and enforcement

13. OFFENCE RELATED TO IPR
• Patent infringement - In general, patent infringement cases are
handled under civil law (e.g., in the United States) but several
jurisdictions incorporate infringement in criminal law also (for
example, Argentina, China, France, Japan, Russia, South Korea)
• Copyright infringement Copyright infringement is reproducing,
distributing, displaying or performing a work, or to make derivative
works, without permission from the copyright holder, which is
typically a publisher or other business representing or assigned by
the work's creator. It is often called "piracy“
• Trademark infringement Trademark infringement occurs when one
party uses a trademark that is identical or confusingly similar to a
trademark owned by another party, in relation to products or
services which are identical or similar to the products or services of
the other party.
• Trade secret misappropriation eg the Pepsi and Coca Cola war

14. Apple, Amazon top list of companies
most sued for patent infringement

15. Copyright Infringements

16. Trademark Infringements

17. Trademark Infringements

18. WIPO
• WIPO is the global forum for intellectual property (IP) services, policy,
information and cooperation. Its a self-funding agency of the United
Nations, with 193 member states.
• WIPO joins the United Nations (UN) family of organizations, becoming a
specialized agency of the UN. All member states of the UN are entitled,
though not obliged, to become members of the specialized agencies.
• WIPO was designed to promote the protection of intellectual property
and help resolve IP disputes across borders and act as a reference for IP
information.
• WIPO achieves this goal by working with 192 member states to develop a
global IP infrastructure and build international respect for IP.
• India, the country with the world's second largest population, became a
member of WIPO in 1975 and is currently party to six treaties
administered by WIPO, namely, WIPO Convention (1975), Paris Convention
(1998), Berne Convention (1928), Patent Cooperation Treaty (1998),
Phonograms Convention (1975) and Nairobi Treaty (1983).

19. The Indian Patent Office (IPO)
• The Indian Patent Office (IPO) is part of the office
of the Controller General of Patents, Designs and
Trademarks (CGPDTM) under the Department of
Industrial Policy and Promotion, Ministry of
Commerce and Industry, Government of India
and is responsible for the grant of patents in
India.
• Patent Office was established in India 150 years
ago and has undergone significant changes ever
since.

20. What is copyright?
• WIPO states that Copyright (or author’s right) is a legal
term used to describe the rights that creators have
over their literary and artistic works. Works covered by
copyright range from books, music, paintings,
sculpture, and films, to computer programs, databases,
advertisements, maps, and technical drawings.
• Copyright law and treaties
• Copyright law aims to balance the interests of those
who create content, with the public interest in having
the widest possible access to that content. WIPO
administers several international treaties in the area of
copyright and related rights.

21. What can be protected using
copyright?
• Exhaustive lists of works covered by copyright are usually not to be
found in legislation. Nonetheless, broadly speaking, works
commonly protected by copyright throughout the world include:
• literary works such as novels, poems, plays, reference works,
newspaper articles;
• computer programs, databases;
• films, musical compositions, and choreography;
• artistic works such as paintings, drawings, photographs, and
sculpture;
• architecture; and
• advertisements, maps, and technical drawings.
• Copyright protection extends only to expressions, and not to ideas,
procedures, methods of operation or mathematical concepts as
such. Copyright may or may not be available for a number of
objects such as titles, slogans, or logos, depending on whether they
contain sufficient authorship.

22. Copyright Law in India
• Copyright law protects expressions of ideas rather than the ideas themselves.
Under section 13 of the Copyright Act 1957, copyright protection is conferred on
literary works, dramatic works, musical works, artistic works, cinematograph films
and sound recording. For example, books, computer programs are protected under
the Act as literary works.
• Copyright refers to a bundle of exclusive rights vested in the owner of copyright by
virtue of Section 14 of the Act. These rights can be exercised only by the owner of
copyright or by any other person who is duly licensed in this regard by the owner
of copyright. These rights include the right of adaptation, right of reproduction,
right of publication, right to make translations, communication to public etc.
• Indian perspective on copyright protection:
• The Copyright Act, 1957 provides copyright protection in India. It confers copyright
protection in the following two forms:
(A) Economic rights of the author, and
(B) Moral Rights of the author.
• (B) Moral Rights:
• Section 57 of the Act defines the two basic 'moral rights of an author. These are:
Right of paternity, and
• Right of integrity.

23. Copyright Cases of 2019 in India
• Sajeev Pillai v. VenuKunnapalli & Anr
• Issue: Whether the author of a work even after assignment of work will have
special rights to claim authorship of his work provided under Section 57(1) of the
Copyright Act?
• Facts: The appellant, Sajeev Pillai, a film director and a script writer claimed to
have researched the history of the grand festival Mamankam and prepared a script
for a movie based on the same epic. He met VenuKunnapalli and signed a MoU
with Kavya Film Company which was associated with Kunnapalli. Sajeev was
initially appointed as the director but then his service was terminated and was
replaced by someone else. The shooting of the movie was thereafter completed
which Sajeev alleged wasdone by mutilating, distorting and modifying his script.
Sajeev in light of that filed a suit seeking various reliefs. An interim injunction
application was also filed to restrain the respondents from releasing, publishing,
distributing and exploiting the film and issuing pre-release publicity without
providing adequate authorship credits to Pillai as per film industry standards.
• Judgement: In deciding the issue, the court noted that the first sub-section of
Section 57(1) provides the author to restrain third parties and the second sub-
section provides the author the entitlement to claim damages by such third party
in respect of any distortion, mutilation or other modifications to his work or any
other action, in relation thereto which would be prejudicial to his honour or
reputation. This provided the appellant an unparalleled advantage in the case and
that his assignment of the work would not exhaust the legal right to claim
authorship over it.

24. Copyright Cases of 2019 in India
• Raj Rewal v Union of India &Ors[2]
• Issue: Whether an Architect, as the creator and legally the ‘author’ of a structure has a right vested in him to object to
such modification or demolition of their work by the owner of the building?
• Background: The dispute centres around section 57 of the Copyright Act, 1957 under which the plaintiff has filed for a
mandatory injunction to reinstate the building according to the original plans. Section 57 of the Copyright Act, 1957
provides the author with special rights called ‘moral rights’ which subsists with the author of the work over and above
economic rights of others.
• Facts: The present case talks about one Mr. Raj Rewal who designed and Mr. Mahendra Raj who was the structural
designer of the Hall of Nations building. The said building was hailed as an icon of modernist Indian architecture and was
erected in the Pragati Maidan grounds in New Delhi. The ITPO in 2016, made a proposal to demolish the Hall of Nations
complex in order to build an ‘Integrated Exhibition cum Convention Centre’. Despite of several attempts made by the
Plaintiff to protect the building from demolition it resulted in what ITPO desired. Post demolition of the building the
Plaintiff instituted a suit against the actions of ITPO by claiming that the actions of demolition had derogated the Plaintiff’s
special rights under Section 57.
• Judgement: Rejecting the plaintiff’s claims the Court framed the issue as a conflict of two different rights, namely – the
architect’s rights under Section 57, and the landowner’s rights to practice acts pertaining to their property.
• The court observed that the plaintiff in this case cannot be allowed to prevent the demolition of the building by the
defendant as it would in turn amount to restriction of the defendant’s right to practice their control over their property
and land which is provided to them under Article 300A which is a constitutional right which prevails over the statutory
rights of the plaintiff which they claim to exist under Section 57 of Copyright Act, 1957.
• The court further states that the author’s right under Section 57 to prohibit ‘distortion, mutilation or modification’ of his
work does not permit an author to prevent complete destruction of their work since “that what cannot be viewed, seen,
heard or felt, cannot be imperfect and cannot affect the honour or reputation of the author.” Therefore, the extent to
which the right vested in the architect extents to is to prevent the building owner to refrain from making changes in the
design made by the architect and passing it off as if the design was made by the architect. The Court in furtherance to that
also relied upon Section 52(1)(x) which acts as an exception to copyright of the architect.[3] The court reasoned that the
‘reconstruction’ envisaged under Section 52(1)(x) could only take place if the building had already been demolished.
Noting that the Copyright Act must be read harmoniously, the court therefore stated that Section 57 could not reasonably
contemplate the right to object to the demolition of a building.
• In conclusion the court dismissed the suit due to lack of cause of action against the demolition of the Hall of Nations.

25. What Copyright Does not Protect

26. Trademarks
• What is a trademark?
• A trademark is a sign capable of distinguishing the goods or
services of one enterprise from those of other enterprises.
Trademarks are protected by intellectual property rights.
• How can I protect my trademark?
• At the national/regional level, trademark protection can be
obtained through registration, by filing an application for
registration with the national/regional trademark office and
paying the required fees. At the international level, you
have two options: either you can file a trademark
application with the trademark office of each country in
which you are seeking protection, or you can use
WIPO’s Madrid System.

27. Trademarks
• What rights does trademark registration provide?
• In principle, a trademark registration will confer an exclusive right to the
use of the registered trademark. This implies that the trademark can be
exclusively used by its owner, or licensed to another party for use in return
for payment. Registration provides legal certainty and reinforces the
position of the right holder, for example, in case of litigation.
• How long does trademark protection last?
• The term of trademark registration can vary, but is usually ten years. It can
be renewed indefinitely on payment of additional fees. Trademark rights
are private rights and protection is enforced through court orders.
• What kinds of trademark can be registered?
• A word or a combination of words, letters, and numerals can perfectly
constitute a trademark. But trademarks may also consist of drawings,
symbols, three-dimensional features such as the shape and packaging of
goods, non-visible signs such as sounds or fragrances, or color shades used
as distinguishing features – the possibilities are almost limitless.

28. Why Trademark is Important

29. Trademark Registration in India
• In India, trademarks and service marks are registered under the federal
registration system, with support of five regional trademarks offices,
which are well-established in Mumbai, New Delhi, Kolkata, Ahmedabad,
and Chennai.
• These zonal trademark registry offices register, regulate, and protect
trademarks and service marks as per the rules, regulations, and provisions
given in the Trade Marks Act of 1999, and the Trade Marks Rules of 2002,
taking into accounts all amendments made to these so far.
• Flawless registration of any newly created trademark or service mark with
any of these zonal trademarks offices, gives complete protection to all the
trademark rights of the trademark owner in places all across India.
• Here, it may also be added that, proper and perfect registration of a
trademark with the immediately concerned national trademark office,
forms the primary basis for all international trademark registrations
worldwide.
• Noteworthy here also is the fact that, as India is a respected member of
most of the international conventions and treaties related with
trademarks in the world over [mentioned in the last section], the
trademark classification list followed in India [given in the Fourth Schedule
of the Trade Marks Rules of 2002] also contains 45 classes, out of which
eleven are associated with services in diverse sectors, and the remaining
34 are allotted to goods and products of various economic fields.

30. • The new Indian Trade Marks of 1999, and the Trade Marks Rules of
2002, now include provisions for the following tasks and facilities:
• The Classes for Service Marks have been increased to eleven
classes, ranging from class 35 to class 45, as per an amendment in
the Trade Marks Rules of 2002, made in year 2010.
• Multi-Class Application --- A Single application can now be filed for
registering trademarks belonging to different classes.
• Registration of the Collective Marks is possible
• The Shape of Goods, Designing of Packaging, and a certain unique
Combination of Colors, have been included in the purview of
definition of a trademark, under the Section 2(1) (zb) of the Trade
Marks Act of 1999.
• The time-period for the validation of the initial registration of a
trademark or service mark, has been extended to ten years from
seven years.
Trademark Registration in India

31. Trademark Registration and Protection Worldwide
• For extending one's businesses to international horizons, proper registrations of the
concerned trademarks under one or more international trademark treaties are pre-
requisite. Today, for protecting the due rights of the owners of trademarks in
international arenas, there are four most significant and influential international
trademark conventions or treaties in the entire world. These magnificent and globally
reputed treaties are the following:
• The TRIPS Agreement (Agreement on Trade Related Aspects of Intellectual Property
Rights): --- This international agreement which came into existence in the year 1995,
is efficiently and prudently administered by the World Trade Organization (WTO), and
has at present over 150 member countries of the world over.
• Berne or Paris Convention: --- The Berne Convention has the great credit for being
the oldest convention in the whole world, for protection of intellectual property. In
1971, this Berne Convention of 1886 was modified in Paris. This famous convention
has been signed by as much as 170 countries, which are located in regions all across
the whole world.
• Madrid Protocol: --- This protocol resulted from the Madrid Agreement of 1989, and
came into force in the year 1995. This highly significant system in connection with
international businesses is administered by the International Bureau of the World
Intellectual Property Organization (WIPO), Geneva, Switzerland. At present, there are
91 member countries to this Madrid Protocol in the world over. In year 2013, India
also became a member to this international treaty for trademarks to provide a
unique opportunity to all domestic companies to protect their mark across the world
jurisdictions by filing one application with one set of fees.
• European Community Trademark (CTM): --- Any company can readily obtain
registration and protection of his trademark in anyone or all member countries of the
European Union, with a single application filed with the CTM Office in Alicante,
Spain.

32. Benefits of Trademark Applications

33. Software Patent
• A software patent is a patent on a piece of software, such as a computer program, libraries, user
interface, or algorithm.
• The concept of "intellectual property" in India over the last few years has taken on some epic
proportions for a number of reasons. One of the primary reasons, attributable to the growing
awareness among the urban Indian population, is of the significance and, more importantly, the
commercial benefits in protecting its intellectual property rights both within and outside India.
• And under traditional principles of intellectual property protection, patent law is to encourage
scientific research, new technology and industrial progress. The fundamental principle of patent law
is that the patent is granted only for an invention i.e. new and useful the said invention must have
novelty and utility. The grant of patent thus becomes of industrial property and also called an
intellectual property. And the computer software is a relatively new recipient of patent protection.
• The term "Patent’’ has its origin from the term "Letter Patent’’. This expression ‘Letter Patent’ meant
open letter and were instruments under the Great Seal of King of England addressed by the Crown to
all the subjects at large in which the Crown conferred certain rights and privileges on one or more
individuals in the kingdom. It was in the later part of the 19th century new inventions in the field of
art, process, method or manner of manufacture, machinery and other substances produced by
manufacturers were on increased and the inventors became very much interested that the inventions
done by them should not be infringed by any one else by copying them or by adopting the methods
used by them. To save the interests of inventors, the then British rulers enacted the Indian Patents
and Design Act, 1911.
• With respect to patentability of software -related inventions, it is currently one of the most heated
areas of debate. Software has become patentable in recent years in most jurisdictions (although with
restrictions in certain countries, notably those signatories of the European Patent Convention or EPC)
and the number of software patents has risen rapidly.

34. Meaning of Software Patenting
• The term "software" does not have a precise definition and even the software
industries fails to give an specific definition. But it is basically used to describe all
of the different types of computer programs.
• Computer programs are basically divided into "application programs" and
"operating system programs". Application programs are designed to do specific
tasks to be executed through the computer and the operating system programs
are used to manage the internal functions of the computer to facilitate use of
application program.
• Though the term ‘Software patent’ does not have a universally accepted
definition. One definition suggested by the Foundation for a Free Information
Infrastructure is that a software patent is a "patent on any performance of a
computer realized by means of a computer program".
• According to Richard Stallman, the co-developer of the GNU-Linux operating
system and proponent of Free Software says, "Software patents are patents which
cover software ideas, ideas which you would use in developing software.
• That is Software patents refer to patents that could be granted on products or
processes (including methods) which include or may include software as a
significant or at least necessary part of their implementation, i.e. the form in
which they are put in practice (or used) to produce the effect they intend to
provide.

35. Conceptual Difference Between Copyright And Patent
• Software has traditionally been protected under copyright law since
code fits quite easily into the description of a literary work. Thus,
Software is protected as works of literature under the Berne
Convention, and any software written is automatically covered by
copyright. This allows the creator to prevent another entity from
copying the program and there is generally no need to register code in
order for it to be copyrighted. While Software Patenting has recently
emerged (if only in the US, Japan and Europe) where, Patents give their
owners the right to prevent others from using a claimed invention, even
if it was independently developed and there was no copying involved.
Further, it should be noted that patents cover the underlying
methodologies embodied in a given piece of software. On the other
copyright prevents the direct copying of software, but do not prevent
other authors from writing their own embodiments of the underlying
methodologies.

36. Conceptual Difference Between Copyright And Patent
The issues involved in conferring patent rights to software
are, however, a lot more complex than taking out
copyrights on them. Specifically, there are two challenges
that one encounters when dealing with software patents.
The first is about the instrument of patent itself and
whether the manner of protection it confers is suited to
the software industry. The second is the nature of
software, and whether it should be subject to patenting.
However, issues involved in conferring patent rights to
software are a lot more complex than taking out
copyrights on them. Specifically, there are two challenges
that one encounters when dealing with software patents.
The first is about the instrument of patent itself and
whether the manner of protection it confers is suited to
the software industry. The second is the nature of
software and whether it should be subject to patenting.

37. Conceptual Difference Between
Copyright And Patent
•
a) Different Subject Matters
Copyright protection extends to all original literary works (among them,
computer programs), dramatic, musical and artistic works, including films.
Under copyright, protection is given only to the particular expression of an
idea that was adopted and not the idea itself. (For instance, a program to
add numbers written in two different computer languages would count as
two different expressions of one idea) Effectively, independent rendering
of a copyrighted work by a third party would not infringe the copyright.
Generally patents are conferred on any 'new' and 'useful' art, process,
method or manner of manufacture, machines, appliances or other articles
or substances produced by manufacture. Worldwide, the attitude towards
patentability of software has been skeptical

38. Who may claim the right to a patent /copyright?
• Generally, the author of a literary, artistic, musical or dramatic work automatically becomes the
owner of its copyright. The patent, on the other hand is granted to the first to apply for it,
regardless of who the first to invent it was. Patents cost a lot of money. They cost even more paying
the lawyers to write the application than they cost to actually apply. It takes typically some years for
the application to get considered, even though patent offices do an extremely sloppy job of
considering.
c) Rights conferred
Copyright law gives the owner the exclusive right to reproduce the material, issue copies, perform,
adapt and translate the work. However, these rights are tempered by the rights of fair use which
are available to the public. Under "fair use", certain uses of copyright material would not be
infringing, such as use for academic purposes, news reporting etc. Further, independent recreation
of a copyrighted work would not constitute infringement. Thus if the same piece of code were
independently developed by two different companies, neither would have a claim against the
other.
A patent confers on the owner an absolute monopoly which is the right to prevent others from
making, using, offering for sale without his/her consent. In general, patent protection is a far
stronger method of protection than copyright because the protection extends to the level of the
idea embodied by a software and injuncts ancillary uses of an invention as well. It would weaken
copyright in software that is the base of all European software development, because independent
creations protected by copyright would be attackable by patents. Many patent applications cover
very small and specific algorithms or techniques that are used in a wide variety of programs.
Frequently the "inventions" mentioned in a patent application have been independently
formulated and are already in use by other programmers when the application is filed.
d) Duration of protection
The TRIPS agreement mandates a period of at least 20 years for a product patent and 15 years in
the case of a process patent. For Copyright, the agreement prescribes a minimum period of the
lifetime of the author plus seventy years.

39. Jurisdictions of Software Patenting
• Substantive law regarding the patentability of
software and computer-implemented inventions,
and case law interpreting the legal provisions, are
different under different jurisdictions.
Software patents under multilateral treaties:
• Software patents under TRIPs Agreement
• Software patents under the European Patent
Convention
• Computer programs and the Patent
Cooperation Treaty

40. Software patenting under TRIPs
Agreement
• The WTO's Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPs), particularly Article 27, are subject to debate on the
international legal framework for the patentability of software, and on
whether software and computer-implemented inventions should be
considered as a field of technology.
According to Art. 27 of TRIPS Agreement, patents shall be available for
any inventions, whether products or processes, in all fields of
technology, provided that they are new, involve an inventive step and
are capable of industrial application. (...) patents shall be available and
patent rights enjoyable without discrimination as to the place of
invention, the field of technology and whether products are imported or
locally produced."
However, there have been no dispute settlement procedures regarding
software patents. Its relevance for patentability in the computer-
implemented business methods, and software information technology
remains uncertain, since the TRIPs agreement is subject to
interpretation.

41. Software patents under the European
Patent Convention
• Within European Union member states, the EPO and other national patent
offices have issued many patents for inventions involving software since
the European Patent Convention (EPC) came into force in the late 1970s.
Article 52 EPC excludes "programs for computers" from patentability (Art.
52(2)) to the extent that a patent application relates to a computer
program "as such" (Art. 52(3)).
This has been interpreted to mean that any invention which makes a non-
obvious "technical contribution" or solves a "technical problem" in a non-
obvious way is patentable even if a computer program is used in the
invention. Computer-implemented inventions which only solve a business
problem using a computer, rather than a technical problem, are
considered unpatentable as lacking an inventive step. Nevertheless, the
fact that an invention is useful in business does not mean it is not
patentable if it also solves a technical problem.

42. Computer programs and the Patent
Cooperation Treaty
• The Patent Cooperation Treaty (PCT) is an international patent law
treaty, which provides a unified procedure for filing patent
applications to protect inventions. A patent application filed under
the PCT is called an international application or PCT application.
Under the PCT, the international search and the preliminary
examination are conducted by International Searching Authorities
(ISA) and International Preliminary Examining Authority (IPEA).
Current Trend
However, before we start hailing the advent of a new era and
equating the patenting of software in India it would be well worth
our while to take a pause and examine the realities of software
patenting. We could do this by looking at examples of countries in
which software patenting has already become the order of the day,
such as in the US and Japan

43. United States Patent and Trademark Office
• The United States Patent and Trademark Office (USPTO) has traditionally not
considered software to be patentable because by statute patents can only be
granted to "processes, machines, articles of manufacture, and compositions of
matter". i.e. In particular, patents cannot be granted to "scientific truths" or
"mathematical expressions" of them.
• The USPTO maintained the position that software was in effect a mathematical
algorithm, and therefore not patentable, into the 1980s. This position of the
USPTO was challenged with a landmark 1981 Supreme Court case, Diamond v.
Diehr. The case involved a device that used computer software to ensure the
correct timing when heating, or curing, rubber. Although the software was the
integral part of the device, it also had other functions that related to real world
manipulation. The court then ruled that as a device to mold rubber, it was a
patentable object. The court essentially ruled that while algorithms themselves
could not be patented, devices that utilized them could.
But in 1982 the U.S. Congress created a new court i.e the Federal Circuit to hear
patent cases. This court allowed patentability of software, to be treated uniformly
throughout the US. Due to a few landmark cases in this court, by the early 1990s
the patentability of software was well established. Moreover, Several successful
litigations show that software patents are now enforceable in the US. That is the
reason, Patenting software has become widespread in the US. As of 2004,
approximately 145,000 patents had issued in the 22 classes of patents covering
computer implemented inventions.

44. Japan
• Software is directly patentable in Japan. In
various litigations in Japan, software patents
have been successfully enforced. In 2005, for
example, Matsushita won a court order
barring Justsystem from infringing Matsuhita's
Japanese patent 2,803,236 covering word
processing software.

45. Indian Position
• With respect to computer software, in Patents (Amendment) Act, 2002, the scope of non-
patentable subject matter in the Act was amended to include the following: "a mathematical
method or a business method or a computer programme per se or algorithms".
However, the recent amendment changes (Ordinance, 2004), which amends the Patents Act,
1970, has been promulgated after receiving assent from the President of India and has came into
effect from 1st Jan., 2005. Apart from change in pharmaceuticals and agro chemicals, one of the
seminal amendments this Ordinance seeks to bring is to permit the patenting of embedded
software.
Hence, the amendment means that while a mathematical or a business method or an algorithm
cannot be patented, a computer programme which has a technical application in any industry or
which can be incorporated in hardware can be patented. Since any commercial software has
some industry application and all applications can be construed as technical applications,
obviously it opens all software patenting.
In any case, any company seeking to file a patent application for software under the Ordinance
should ensure that its invention firstly, follows the three basic tests:
• Inventive Steps
• Novelty
• Usefulness
Therefore, it is important that the software sought to be protected is not merely a new version or
an improvement over an existing code.
Further, in accordance with the specific requirements of the Ordinance with regard to patentability
of software, the software should necessarily have a technical application to the industry or be
intrinsic to or "embedded" in hardware. This is to prevent against any future litigation or claims of
infringements being raised, which is a distinct probability even after a patent has been granted.

46. Any Query