It can be undisputedly argued that Computer programs and
electronic circuitry diagrams both have been a subject matter of
copyright protection but implementations of these appear more than
the subject matter of copyright protection. However, there has been
uncertainty and controversy over software patentability
internationally including India for a long time. The software which
can be termed as computer codes/programs written in any computer
language is an intangible form/nature asset, and due to its nature,
it is generally debated whether the software a subject matter of
copyright or a subject matter of a patent. It appears that
software, due to its special nature, is mistakenly considered a
subject matter of copyright as ‘literary work‘ primarily than a subject
matter of patent as software inventions. This article discusses
that the software invention, despite its special nature, is just
like inventions in other fields of technology. This assertion has
been affirmed by various settled judicial precedents including the
recent Delhi High Court’s decision in matter Ferid Allani vs
Union Of India & Ors on 12 December 2019 and by the
guidelines such as the Revised Guidelines for Examination of
Computer Related Inventions. Further, this assertion can also
be demonstrated theoretically by understanding/applying the
evolution of software technology and its fundamental/logical
relation with related conventional filed of technologies such as
electronic technology.

Judicial Precedents on Software or Computer Technology by Delhi
High Court

The Delhi High Court in para. 10 on page 3 of its decision in
matter Ferid Allani vs Union Of India & Ors dated 12
December 2019 states “. In todays digital world, when
most inventions are based on computer programs, it would be
retrograde to argue that all such inventions would not be
patentable. Innovation in the field of artificial intelligence,
blockchain technologies and other digital products would be based
on computer programs, however the same would not become
nonpatentable inventions – simply for that reason. It is rare to
see a product which is not based on a computer program. Whether
they are cars and other automobiles, microwave ovens, washing
machines, refrigerators, they all have some sort of computer
programs in-built in them. Thus, the effect that such programs
produce including in digital and electronic products is crucial in
determining the test of patentability.” The decision
dated December 12, 2020, by the Delhi High Court was passed in
respect of a writ petition filed before the Court, challenging an
order of the IPAB dated 25th March 2013, by which the IPAB had
dismissed the appeal filed by the Applicant challenging an order of
the Patent Office dated 18th November 2008, in effect, confirming
the rejection of the patent application (# IN/PCT/2002/705/DEL
dated 17.07.2002).

The Delhi High Court, further, in para. 11 on page 4 states
“Across the world, patent offices have tested patent
applications in this field of innovation, on the fulcrum of
`technical effect and technical contribution.
If the invention demonstrates a technical effect or
a technical contribution it is patentable even though it may be
based on a computer program.”

Although, in view of the decision of the Delhi High Court, a
hearing was scheduled by Patent Office on 27th January 2020,
however, the Patent Office by an order dated 07th February 2020
further refused the patent application on the grounds that claimed
invention lacks novelty and falls under section 3(k). The said
refusal by the Patent Office was, further, challenged by the
Applicant before the IPAB and it is pertinent to note that the IPAB
in its order dated 20th July 2020, sets aside the Patent
Office’s rejection/refusal in order to allow the patent
application in favor of the applicant.

It could be easily collected from the above passages that Delhi
High Court has acknowledged the eligibility of the software as
patentable inventions despite its special nature and has explained
the principles that have to be applied by the examiner, and are
expected to assist the examiner in dealing with applications,
especially, those which involve such complex subject matter.

Evolution of Software Technology and Logical Relation with
Electronic Technology

IBM had a dominant position in the punch card industry in 1950.
These IBM punched-card machines were electro-mechanical
machines containing electronic circuity
without any piece of software. IBM used to file
patents for those Punched Card sorting machines
without describing software implementation. After
the advent of the general-purpose digital computer in 1950, IBM
started replacing, or complementing punch card equipment, with
general-purpose digital computers bundled with a
limited set of computer programs. IBM also applied for patents for
such inventions related to computers or software back in
1950-60.

Thus, from the above, software technology may be defined as a
complement to electronic technology, or it can be said that
electronic circuits (hardware) and software programs are logically
equivalent. For example, the publication
“Hardware/Software Tradeoffs: A General Design
Principle?” recites “Hardware and software are
logically equivalent. Any operation performed by software can also
be built directly into the hardware and any instruction executed by
the hardware can also be simulated in software. The decision to put
certain features in hardware and others in software is based on
such factors as cost, speed, reliability, and frequency of change.
There are no hard and fast rules to the effect that X must go into
the hardware and Y must be programmed explicitly. Designers with
different goals may, and often do, make different decisions… the
boundary between hardware and software is arbitrary and constantly
changing. Today’s software is tomorrow’s
hardware and vice versa.”

The above observations have also been affirmed by patent offices
including India Patent Office, for example, the specification (the
disclosure) of IN patent (IN266883B || WO2007109793A2) granted to Qualcomm Inc recites: “.
may be implemented in hardware, firmware, software,
or any combination thereof.” in abstract and
“Those of skill would further appreciate that the various
illustrative logical blocks, configurations, modules, circuits, and
algorithm steps described in connection with the embodiments
disclosed herein may be implemented as hardware,
firmware, software, or any combination thereof
.” in para. [143]; and similarly EP patent (EP1678909B1) granted to IBM recites
“. it will be understood by those skilled
in the art that various changes in form and detail may be made
therein without departing from the scope of the invention. For
example, the present invention
may be implemented using any combination of computer
programming software, firmware or
hardware.“

So should the above inventions’ patent be designated as a
software patent, a firmware patent, or a hardware patent?
Obviously, what is significant is that it is a real invention; that
it is a contribution to the state-of-the-art; and that the claims
are appropriate for the claimed invention.

The Objectives of the Guidelines for Examination of
Computer-Relation-Inventions

The IPO published “Revised Guidelines for Examination of
Computer-Related Inventions” in para. 1.1 on page 3,
recites “.Computer Related Inventions (CRIs)
comprises inventions which
involve the use of computers, computer networks or other
programmable apparatus and include such inventions having one or
more features of which are realized wholly or partially by means of
a computer programme or programmes . The objective of this document
is to bring out clarity in terms of exclusions
expected under section 3(k) so that eligible
applications of patents relating to CRIs can be examined
speedily.” The CRI guidelines has not discussed whether
the software is a patentable invention or not, but the CRI
guidelines has provided instructions for various stakeholders,
particularly for persons who are not skilled in the art of computer
technology, to understand what kinds of software fall u/s 3(k) and
to assist the Patent Examiners/Controllers to ascertain that
patents for genuine software inventions are not denied.

From the above, the patent applicants can be assured that Indian
Patent Authorities and Indian Judicial Institutions, at per with
their International Counterparts, shall be considering software
inventions patentable just like inventions in related fields of
technologies i.e. electronic technology.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.